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High Court of Australia Transcripts |
Sydney No S75 of 2000
B e t w e e n -
KIMBERLY-CLARK AUSTRALIA PTY LTD
Appellant
and
ARICO TRADING INTERNATIONAL PTY LTD
First Respondent
ARIE KLIGER
Second Respondent
FRANCISCO MARTIN OTERO T/A KOALA NAPPY EXPRESS
Third Respondent
GLEESON CJ
McHUGH J
GUMMOW J
HAYNE J
CALLINAN J
TRANSCRIPT OF PROCEEDINGS
AT CANBERRA ON THURSDAY, 5 OCTOBER 2000, AT 10.22 AM
Copyright in the High Court of Australia
MR D.K. CATTERNS, QC: May it please the Court, I appear with my learned friend, MS S.J. GODDARD, for the appellant. (instructed by Sprusons: Solicitors)
MRS A.C. BENNETT, SC: May it please the Court, I appear with my learned friend, MS K.J. HOWARD, for the respondents. (instructed by Banki Haddock Fiora)
GLEESON CJ: Yes, Mr Catterns.
MR CATTERNS: Your Honours, the issue presented by the appeal is whether the complete specification of the appellant's patent complies with section 40(2)(a) of the Patents Act. The question of law involved in determining that seems, at least on our side, to be whether their Honours, Justice Wilcox and Justice Branson, who were in the majority in the Full Court of the Federal Court, were right in imposing what we are calling, as a shorthand, an essential features requirement on the body of the specification, namely, that the specification should specify what the essential features are, whereas we submit that that is the task of the claims.
It appears from our friends' written submission that there is a little, perhaps disagreement, about what the true ratio of their Honours is, and we will come to that, but the way the issue arises, we submit, can be seen from the pleadings which are in volume 1. At page 10, following the cross-claim for revocation, there are, as required by the Act and regulations, particulars of invalidity beginning with novelty, the question of manner of manufacture in 1(a) dealt with by this Court in Ramset, obviousness in paragraph 2, and in particular paragraph 3:
The specification of the patent does not comply with subsection 40(2)(a) of the Act in that the complete specification does not describe the invention fully, including the best method known to the applicant for the patent of performing the invention.
PARTICULARS
(c) If the use of "fluid pervious" flaps is an essential feature of the claims it is not described as an essential feature of the "invention" in the body of the specification.
And, your Honours, we respectfully submit that that is what their Honours Justices Wilcox and Branson held. It is correct, in fact, as to the body of the specification, but wrong in law, because that is not the test under section 40(2)(a).
Your Honours, may I just briefly, without of course going in detail to our written submissions, remind your Honours what the role of the specification is in modern patent law including, in particular, under the 1990 Patents Act. It is, as his Honour Justice Gummow has pointed out in a couple of cases which we cite, Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd and with a Full Bench, CCOM Pty Ltd v Jiejing, twofold function: first, to provide the consideration for the grant of a limited statutory monopoly, whereby you teach skilled addressees in their relevant field of art how to work or how to perform the invention so that they can work it when the patent expires or, alternatively, if they get a licence they can know how to work it.
That, your Honours, we submit, is the task of describing the invention fully in terms of 40(2)(a) teaching how to work it, not specifying what the essential features are. The second function of a specification is to end with a claim or claims which define, as distinct from describe, the invention, that is to mark out the ambit of the monopoly so that people in the relevant art know what they can and cannot do. That is the task of defining. It is our essential - to coin a phrase, it is our submission that those two tasks, "describe" and "define", are now and have been for more than a century completely distinct functions.
McHUGH J: Yes, but that is not the way the case is put against you, is it? What is said against you is that you are putting up a straw man to knock over and that you do not really face up to what the real case against you is and that is that their Honours in the majority found that when you looked at the whole of this document there was no sufficient instruction to the reader of the document how to make or construct what was this invention. Now, that may be right or may be wrong but that is the argument.
MR CATTERNS: Your Honour, that raises the legal question. There is no question in the world that the claims do say that. There is no question in the world that the body as distinct from the claims does not.
GUMMOW J: Say what?
MR CATTERNS: Instruct the reader that an essential feature is fluid pervious flaps, the body as distinct from the claims. But, your Honour, there is no question at all that the skilled reader was taught how, physically, to make it. There is no doubt at all that they know how to make it. The question is are they told that they must make it with liquid impervious flaps, which would not infringe or with liquid pervious flaps, which would.
We submit, your Honour, and we will take your Honours to some authorities, that it is the job of the claims to tell you that. "Instruction" is not really the right word, it is the job of the claims to define it in those terms and it is the job of the body of the specification to tell you how to make it. There is no doubt that they are told how to make it, let us say optionally, liquid pervious or liquid impervious. There is some evidence that we will go to shortly of what a skilled reader would do reading the specification, and a finding by his Honour Justice Burchett about what a skilled reader would do reading the specification. So, your Honour, we do not, with respect, agree that it is a straw man. We submit it is the ratio and it is a narrow legal point because the facts - - -
GUMMOW J: If you go to paragraph 2 of your opponent's written submissions, the last five or six lines there, and then if you go to paragraph 10, that may crystallise what is put against you, in a way.
MR CATTERNS: Yes, your Honour. Our friends do not seem to wish to propound the essential features approach that we submit is the ratio of their Honours; but in paragraph 2 of our friends' submission - and we do not want to construe our friends' submissions - really, they just restate it. Instead of saying "the body of the specification failed to specify the essential features", our friends use the words "integers, each essential to achieve the alleged `new working' and necessary to the invention". That is just another way of saying the same thing. But, your Honours, the nub of it is, paragraph - - -
GUMMOW J: Maybe they are saying, "The complete specification fails to describe the invention fully because it does not direct", as distinct from permit, "the inclusion of certain integers".
MR CATTERNS: Yes, your Honour, and we respectfully adopt that distinction. It is not the function of the specification to direct people. The two functions in the section, which we will come to shortly, are - - -
GUMMOW J: I said "direct" because that is the word that is used in paragraph - - -
MR CATTERNS: I know, your Honour, but that is part of the error, with respect.
McHUGH J: But the inventive step which you claim was providing an inner barrier to make a waste containment pocket of which an essential integer was that it should be fluid pervious.
MR CATTERNS: Yes, essentially, your Honour.
McHUGH J: Would the skilled reader understand that he or she had to construct that from the total specification?
MR CATTERNS: Yes, your Honour, as held by his Honour Justice Burchett at page 368, line 37:
On the uncontradicted evidence, the expert reader of the specification -
that is as a whole, answering your Honour's question -
would understand the disclosure made by it to be directing him, as a practical matter, to make a disposable nappy falling within the terms of claims 1 and 2.
May I remind your Honours that that evidence was uncontradicted.
McHUGH J: The question is "falling within the terms of claims 1 and 2".
GLEESON CJ: Did Justice Burchett direct his mind to this issue? I had an impression, perhaps erroneously, that the point on which the respondents succeeded in the Full Court was not a point that was prominent at the hearing before Justice Burchett.
MR CATTERNS: Your Honour, with respect, that is right, but the answer to your Honour's question is "yes", as follows. His Honour largely dealt with this matter as a question of fair basis, as your Honours can see in the passages around 368.
McHUGH J: That was what I was just going to put to you, that at line 35 immediately before the sentence to which you referred, his Honour was talking in the context of "fair basis", so it was a subsection (3) point.
MR CATTERNS: Yes, your Honour, so far, so good. But his Honour continues over these next few pages continuing the discussion of "fair basis". As your Honours can see in the pleading, the very same point, namely this sufficiency point, was picked up in the "fair basis" points and just adopted in the "fair basis" points. It was run, as his Honour the Chief Justice suggests, principally as a "fair basis" point before his Honour Justice Burchett. But his Honour goes on to apply this, we submit, on the question of sufficiency. I get that at 371 where his Honour goes on at about line 22 continuing to discuss the word "pervious" and the balance that is required between acting as a barrier but also allowing fluid to pass back when it is trapped between the flap and the skin. Coming to the point, on page 372 his Honour rejects an argument about the special meaning of "pervious" and at line 20 says:
It follows also that I do not accept arguments, based on the concept of liquid perviousness, or on the other alleged disconformities between the claims and the specification, by which counsel contended that the claims were not "clear and succinct" within s 40(3).....and that the claims did not "define" the invention within s 40(2) or describe it fully within the same provision, the effect of which was stated by Carr J -
So we respectfully submit that, although it is completely clear that that finding I took your Honours to was principally with respect to the question of "fair basis", his Honour applied it on page 372 to the question of sufficiency. That really gets us to the legal question.
If you read the document and stop at the claims, it is optional. If you read the document as a whole, including the claims, you know that to perform the invention claimed it would be liquid pervious flaps; if you want to avoid infringement, as the respondents submitted they had done, you make them with liquid impervious flaps, but there is no question at all you know how to make it either way.
GUMMOW J: What was the debate about infringement?
MR CATTERNS: A number of debates, your Honour, including whether or not the flaps were liquid pervious. When you dropped a drop of fluid on them, water on them say, it held the drop until you touched it.
GUMMOW J: So there was an allegation of infringement of claim 1, was there?
MR CATTERNS: Yes, your Honour, and claim 2.
GUMMOW J: What is the difference between claim 1 and 2?
MR CATTERNS: Your Honour, the backing sheet in claim 1 is - perhaps if I could go to it, your Honour. We claimed infringement of all but, your Honours, it narrowed down to claims 1 and 2. At page 191 your Honours can see at line 7 on the page:
a liquid pervious bodyside liner, coterminous with said back sheet -
and there is a slightly different description of the physical object in claim 2, but the particular point, your Honour, was the liner did not go all the way to the edges of our friend's product - it missed the edges by a centimetre or so - and there was an argument about whether that was coterminous as a matter of substance and held yes.
GUMMOW J: And what else?
MR CATTERNS: That was the principal difference. So, your Honour, the first argument on the infringement was whether or not the flaps were liquid pervious because, as I say, when you put a drop of water on them it did not go through unless you touched them or rubbed them, held it is a practical matter in use and that, therefore, they were liquid pervious. Your Honour, there was also some other arguments, including the fact that the bodyside liner was made up of two parts joined together, whether it could be said to be coterminous.
GLEESON CJ: And what issues remain in the appeal?
MR CATTERNS: Your Honour, if we were successful and the matter was remitted, there would be a question of novelty in relation to one specification, called the Beckestrom specification - - -
McHUGH J: What about fair basis?
MR CATTERNS: I was going to come to that, yes, your Honour, and then fair basis. Your Honour, in our submission, the fair basis question - this is in some ways more realistically a fair basis question, as it was run with respect at trial, and the question would be whether it provides fair basis to have in the claims a narrowing to liquid pervious flaps when they are described as optional in the body. We give your Honours references to the Full Court of the Federal Court here in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd saying in a case of an optional disclosure that it was, citing the Court of Appeal in AMP v Hellerman in the United Kingdom, also where an optional disclosure was held to provide fair basis.
The question is, "Is there a real and reasonably clear disclosure to a skilled addressee that supports the claim?" And, your Honours, if we succeed, that would be a matter to be dealt with by the Full Court on which Justice Tamberlin has already expressed a view in our favour.
GUMMOW J: This is footnote 5, is it, in your submission?
MR CATTERNS: Yes, your Honour, it is. I think that is page 7, your Honour.
GUMMOW J: "Description of an integer as optional can provide fair basis"?
MR CATTERNS: Yes, your Honour, and we give the references to the RGC Case and the AMP v Hellerman Case.
GUMMOW J: They are not the first cases on that point surely.
MR CATTERNS: No, they are not, your Honour. We picked RGC because it was the latest and an Australian case and a Full Court. Your Honour, it is pretty clear now, we would submit, that the test of fair basis is real and reasonably clear disclosure, see CCOM Pty Ltd v Jiejing Pty Ltd, picking up his Honour Justice Fullagar in the Rhone-Poulenc Case.
GLEESON CJ: In drafting a document like this what would be the purpose of making an essential integer optional in a specification?
MR CATTERNS: Your Honour, the history is this, and I will take your Honours to it: we described the invention broadly. The nub of our invention was the provision of a diaper with the flaps as a containment pocket. The nub of it was not pervious versus impervious and as the document was filed originally - - -
GUMMOW J: And that excites your opponent, who cannot restrain herself, but what was the inventive step? How do we find that?
MR CATTERNS: Your Honour, we find that by working out what the - may I just say this, your Honour. Of course the specification does not have to state it as held in many cases. It can be remembered from a dream. A US inventor might not know what the state of common general knowledge is in Australia and therefore you do not have to say what your inventive step.
GUMMOW J: No, but the summary of the invention might give a hint, might it not, on page 2?
MR CATTERNS: Yes, your Honour. Yes.
McHUGH J: I mean, if you look at the opening words of the specification at 185 it is hard to come to any other conclusion but that the draftsperson thought that 185 through to 190 fully described the invention. It starts off:
The following statement is a full description of this invention, including the best method -
et cetera, et cetera.
MR CATTERNS: Yes, your Honour, going through to, as your Honour says - but, your Honour, I submit the specification goes through past 190 and includes the claims.
McHUGH J: I know it does and I know that is the point that you make. What I was saying to you though is that it appears that the draftsperson thought the full description of this invention was between 185 and 190 rather than 185 and following right through to the end, including the claims.
MR CATTERNS: Your Honour, I, with respect, do not get that from the bottom of page 185. The document is a whole document. May I, in partial, in answer to your Honour but also to his Honour the Chief Justice's question: the specification was written by an American who has rights under the Paris Convention to apply in Australia within a year and, your Honours, he writes his invention describing it and you describe it as broadly as you can.
GUMMOW J: First of all, you start off by saying what is defective in the present state of knowledge.
MR CATTERNS: And they do that, your Honour. That at page 187.
GUMMOW J: That is the first two paragraphs, is it not?
MR CATTERNS: And then, your Honours, the - - -
GUMMOW J: Just slow down a minute, Mr Catterns. Just slow down a minute.
MR CATTERNS: Sorry, your Honour.
GUMMOW J: So, the first two paragraphs tell you what is wrong, in particular lines 18 to 20, do they not?
MR CATTERNS: Yes, your Honour. That begins to be the prior art, and they have - - -
GUMMOW J: Yes. Then you get told what the summary of the invention is at the top of the next page.
MR CATTERNS: Yes, your Honour, that is right, your Honour. Your Honours, picking at pages 188 to 190 for a moment - - -
GUMMOW J: Then you are given what you are told is a detailed description.
MR CATTERNS: Yes, your Honour.
GUMMOW J: Then you are given claims.
MR CATTERNS: Yes, your Honour. Your Honour, what happened here, as happens in many cases, is - - -
GUMMOW J: No reference in the summary to "impermeable" or "permeable".
MR CATTERNS: That is right, your Honour. So what happened was the inventor described - we accept, your Honour, that the crucial part of the inventive step was - - -
GUMMOW J: That may be part of the fair basis problem you have to face up to sooner or later.
MR CATTERNS: Yes, your Honour, of course, but it is not a sufficiency problem, we submit.
GUMMOW J: No.
MR CATTERNS: So, your Honours, the inventor describes their invention, picking up his Honour the Chief Justice's question, broadly, as optional because it is not the end of the world if they are impermeable, as we know from the fact, as pointed out by Justices Wilcox and Branson, that Proctor & Gamble sold one that was impermeable with success. So it is described broadly and, your Honours, if I may go to the document we originally filed - it is a little bit out of the order I was going to go - but if your Honours would go to page 300 in volume 2, this is the document that we initially filed in Australia and, your Honours, it is word for word the same so far as the descriptions go. So, it goes through to page 303 where there is the description:
The flap material is preferably soft -
et cetera -
and/or fluid permeable.
But then, your Honours, crucially, the claims were different, as originally applied for in Australia. At page 304 - this is answering your Honour the Chief Justice directly - we claimed diapers with flaps, as your Honours can see at line 21:
two flaps extending toward each end -
indifferently as to whether they were liquid pervious or not. Put a better way, not limited, and in patent jargon, of course, your Honours, that means it is broader. Then, as is conventional and as is contemplated by section 40, there is a dependent claim which just means a narrower claim adding another integer, to the diaper of claim 1 wherein the flap is fluid permeable. So, your Honours, what has happened is in prosecution we abandoned claim 1. Now the reason is not in evidence, but it is probably because the examiner, at page 306 at the bottom of the page, says, I reject the specification on the grounds that it "is not novel" over a number of prior specifications, one of which your Honours will see - I am sorry, photocopying with my handwriting as is - was one of the specifications in the case alleged on novelty.
Following that, and not necessarily because of it, but it may well be because of it, we amended, and your Honours can see at 310 - following correspondence where we say, "Here is a statement of proposed amendments", we amended, in effect, to claim what had been claimed to, the narrower claim. So we chose one of the two options. As his Honour Justice Gummow points out, that is a fair basis question: Is the selection of one of the two options fairly based? Is that supported by a description? To put it another way, or the right way, is there a real and reasonably clear disclosure? We submit yes, and that is a matter on - - -
GUMMOW J: It is a pity all these questions were not decided by the Full Federal Court. It really is. Neither of the parties bear responsibility for it but it is a pity. What is the difference between claim 1 as originally framed? Just explain that to me again.
MR CATTERNS: I am sorry, your Honour, it is at 304. It is worded differently, but in particular at line 21, your Honour sees "the flaps"?
GUMMOW J: Yes.
MR CATTERNS: They are not limited as to fluid pervious.
GUMMOW J: I see.
MR CATTERNS: It is in claim 2 and the specification uses "pervious" and "permeable" interchangeably.
GUMMOW J: Yes, I see, thank you.
MR CATTERNS: In claim 2 there is the narrowing. What we have done is - - -
GUMMOW J: It looks as if the narrowing was in the light of some prior art.
MR CATTERNS: Yes, your Honour, exactly. There was also some evidence of things happening in America and there is also a desire generally to have your patent the same in different countries, otherwise, if you ever come to amend, the argument is you have been covetous and it is a discretionary ground. That is the other possible - as I say, there is no evidence about the reasoning, but one of those two possibilities. So what we have done here is we filed a description which is optional, we all agree, and we have now, for the reasons which we can see or guess, narrowed our claim to be liquid pervious. I accept that that is a "fair basis" question and we submit that it is fairly based on optional, but we submit it is not a sufficiency question. If it were, you would always have to state in the body of the specification as essential features all of the other little integers. Looking at page 304, including that it is essential that the flap contains spaced parallel elastic members.
GUMMOW J: Of every claim.
MR CATTERNS: Yes, your Honour, otherwise our friends will say the specification - - -
GUMMOW J: Not just claims 1 and 2.
MR CATTERNS: No, your Honour. I just picked 6 then as an example. Otherwise our friends will say this specification is defective because it does not direct you to have in the body spaced parallel elastic members. That is why his Honour Justice Burchett is right when he made that finding of fact I took your Honours to in reading the document as a whole. To make it means choose the right fabric, stick it together in the right way, have the right shape, have the right elastic, and that is what you need to be told how to do. If you want to know what infringes and what does not, you look at the claim. You can choose so far as the body goes: permeable or not. If you want to know the ambit of monopoly, you go to the claim which defines it. The one thing that is for sure here is that the skilled addressee knows physically how to make it. Our submission is that section 40(2)(a) is only about that. Do you know how to make it? It is not a question of directing you one way or the other.
GUMMOW J: Mrs Bennett says, "What is the `it'?".
MR CATTERNS: That is an interesting thing, and his Honour Justice McTiernan says in AMP v Utilux, which I will come to, which we submit is right on the point, he says the "it" is, looking at the summary, "an elastic leg unitary disposable diaper which has an elasticised flap and which is more precisely, or more narrowly defined in the claims as possessing liquid pervious flaps". Really, your Honours, that is why I submit it is a legal question. Perhaps two questions: whether we could read the document as a whole in satisfying the requirement of 40(2)(a) to describe, but really, whether or not it is a function of the specification, in describing the specification, to state what is essential.
May I just remind your Honours that this idea of essential features, comes from a different - - -
McHUGH J: But does the skilled reader who wants to make the nappy, which constitutes this invention, know what nappy he has to make? Does he make or does she make a nappy with fluid pervious flaps or one with fluid impervious?
MR CATTERNS: But your Honour, with respect, they are not playing a game of seeing how - - -
McHUGH J: That is what I do not understand and why the "and/or" in the earlier part throws me into confusion. What is the point of it? You seem to be saying, "Well, because of what is in the claims, you can ignore the "and/or"".
MR CATTERNS: No, your Honour. The way these things work, I respectfully submit, is a skilled addressee who would know something about the art contrary to what their Honours said. A skilled addressee is taken to know something about the art. They read these thing as a whole. They do not - why I said "game", your Honours - they do not play some sort of artificial game with themselves, rule a line at page 390 and say, "I cannot read the next two pages, how do I go?".
You read the document as a whole, you see there are two options, you see that only one of the options is claimed. Then you say to yourself, "Okay, if I want to do what is claimed, I will get a licence, or wait 20 years and then I know how to do it", and there is no question at all they know how to do it, or they say, "Well, here is a bit of extra free advice from the patentee where they told us about impervious flaps and they have not claimed it, I can go and do that if I want to". Your Honour, reading the document just in a modern, practicable way, there is no trouble.
McHUGH J: Do not worry about reading it in a modern, practical way, the question is, does it comply with section 40?
MR CATTERNS: Yes, your Honour. May I go to that?
McHUGH J: Does it describe the invention fully?
MR CATTERNS: Yes. Well, your Honour, what does "describe" mean? We have both given your Honours a definition. It means to tell you everything about. First of all, can I just get a couple of propositions out of this. First, looking at the section just as a matter of statutory construction, there is a distinction. First proposition. Describe and define are separate concepts in subsection (2)(a), "Describe the invention fully", and subsection (b) or paragraph (b), "end with a single claim or claims defining the invention."
So our first proposition is that there are two different things, two separate requirements, set out in the section. Our second proposition is that the specification is a document as a whole, looking at (b), with ends with a claim or claims defining the invention. In other words, the claims are part of the specification.
Your Honours, thirdly, the concept of describing the invention fully includes saying what the best method known to the applicant of performing the invention is, so the concept of performing the - - -
GUMMOW J: But there may be other methods.
MR CATTERNS: Yes, your Honour, but they are methods of performing the invention and so, in other words, the concept of description includes performing the invention. That is our submission.
GUMMOW J: All I am saying to you is the invention may be capable of being performed other than by use of the best method, which indicates why one has various claims about other things.
MR CATTERNS: Exactly, your Honour. But you can also perform the invention, which I have generally described, in a way which does not infringe my claims because I have drawn my claims more narrowly for some reason or another. So, your Honours, that is our third - - -
McHUGH J: I know you got special leave by throwing this case up as a great point of principle.
MR CATTERNS: It is, your Honour.
McHUGH J: Yes. I am still to be persuaded that it is anything more than a pleading point.
MR CATTERNS: No, your Honour. We respectfully submit that if this essential features argument is right and you have to state in the body of the specifications - - -
McHUGH J: No, but you keep saying that. Your opponent does not say that. Your opponent's argument is sure you can look at the whole of the document but when you look at this document you do not know where you are.
MR CATTERNS: No, your Honours. Our friends will not let us read the whole document to - our friends will not, as I understand their argument. But, your Honour, with respect, in the questions your Honour puts to me is doing the same thing arguendo as their Honours Justices Wilcox and Branson because your Honour is saying, "When I read to page 390 I only see optional and I don't see what is known as the essential feature, namely the fluid permeable flaps."
Our submission is that why this case is worth special leave is, if that is the law, people will have to write specifications differently. They will have to say in the body of their specification what is and is not essential as distinct from the claims.
McHUGH J: They generally do, do they not?
MR CATTERNS: Your Honour, they had to until 1883.
McHUGH J: Well, that is a long time ago.
MR CATTERNS: Yes, your Honour.
GUMMOW J: But they have not since.
MR CATTERNS: They have not had to, no, your Honour.
GUMMOW J: No, and that is why - - -
McHUGH J: They have not had to since but they generally do.
MR CATTERNS: They do, your Honour. Often there is a consistory clause.
McHUGH J: Yes.
MR CATTERNS: The High Court says in Welch Perrin, which I will go to shortly, you do not have to any more. The reason you had to do it, your Honours, is that you had to know, as we go back to the 1852 Act which we cite, what the claim is. Originally, of course, your Honours, patents were granted on the title. That is it. That was your monopoly. You got your monopoly by putting forward a title, then a provisional specification in 1852 and so on, and claims became mandatory in 1883.
So, your Honours, I do respectfully submit that this is a crucial legal question because, if we are wrong, you write specifications differently. If we are wrong, you never say optional because even though that is okay for fair basis, it is not for sufficiency because you had to say you must do this in the body.
GUMMOW J: It would mean that the cases in which optional has not invalidated for reason of fair basis were wrongly decided because they should have been invalidated for want of sufficiency.
MR CATTERNS: Yes, your Honour, but pleading matters and so on.
McHUGH J: When did "fair basis" come into the law?
MR CATTERNS: I think 1883, your Honours. His Honour - - -
McHUGH J: I thought it was later than that. I may be wrong.
MR CATTERNS: In the 1852 Act, I beg your pardon.
McHUGH J: Yes.
MR CATTERNS: It is discussed in CCOM, your Honour, by the Full Court, but before the 1852 Act cases such as Mullard v Philco in England had a defacto "fair basis" rule where in Mullard v Philco the claims were broader than the specification because they did not have one of the anodes or cathodes; they were not limited to that and that pattern was invalidated on that ground. So, your Honours, we submit they are different areas of law and if our friends are right, we submit then there is a problem in writing specifications, which if that is the law, that is the law, of course.
GUMMOW J: Well, it means there is going to be a lot of invalid patents.
MR CATTERNS: Well, that is my submission. I do not want to weary the Court with floodgates.
GUMMOW J: It is not quite a light fingers as all of that.
MR CATTERNS: But, your Honour, what I get from that, yes, and every dependent claim of every patent, unless you have written a consistory clause carefully for every single claim, saying, "In one way I do this. Such and such is essential", or something like that. So, your Honours, our third proposition on section 40 was that the concept of description includes performing the invention. That is what it is about, we say; it is the consideration.
Your Honours, just a couple more propositions about section 40: fourth, the words "the nature of the invention" do not appear. Now, your Honours, our friends make much of the words "the nature of the invention" and the passage their Honours quote from the patent Gesellschaft Case, uses that phrase - those words.
GUMMOW J: Where is that?
MR CATTERNS: Can I just use our submission, your Honour; is that a convenient place to look at it? It is at the top of our page 10. Your Honours, on this his Honour Justice Carr, speaking with any other members of the court agreed says:
The specification contains a full description if it makes the nature of the invention plain to persons having reasonably competent knowledge of the subject - - -
GUMMOW J: Yes, I know. Has anyone used it before 1997 in the Federal Court at first instance?
MR CATTERNS: I am not sure, your Honour, but we give the history of it. The four cases that support it there, your Honour, it is very clear, we submit, are Edison & Swan - these are the ones cited by Justice Carr - Samuel Taylor, AMP v Utilux and Valensi and, your Honours, as we attempt to demonstrate, we submit, successfully, over the next few pages, all of that goes back to the 1852 Act, because in the Samuel Taylor Pty Ltd v SA Brush Co Ltd Case, his Honour Justice McTiernan sets out at length a passage from the judgment of Justice Lindley, which your Honours see at the top of page 11 - I will not take your Honours to it - but when your Honours go to Edison & Swan, Lord Justice Lindley, although the case is dated after 1883, it concerned Edison's patent which was granted under the earlier 1852 Act, and it was required under the 1852 Act to tell you what the nature of the invention was, because there were no claims.
GUMMOW J: What happened to Edison's patent?
MR CATTERNS: I think revoked, your Honour, on the ground of sufficiency. My first proposition is that that phrase "the nature of the invention" does not appear in section 40. You have to say what the nature of your invention is when you are describing it. It is a much lesser requirement, as our friends say. You are saying this is a diaper with flaps, if that is the nature of the invention, but that does not mean you have to describe essential features. The words "the nature of the invention" were in the 1852 Act in England, stayed in the 1883 Act in England, even when the requirement for claims was put in the 1883 Act, were in the Queensland Colonial Act our friends gave your Honours a copy of, were not in the 1903 Patent Act with respect to a complete specification. I will give your Honours a bundle in a while if I may.
GUMMOW J: Just before I get too dizzy with all of this, what is Lord Justice Lindley saying in that passage at the top of page 11?
MR CATTERNS: He is saying that there are - - -
GUMMOW J: He says two things.
MR CATTERNS: - - - two requirements which are in section 9 of the 1852 Act. You have to particularly describe and ascertain the nature of his particular invention.
GUMMOW J: Yes. Then he comes back to that. He says:
The first condition imposes upon the Patentee the necessity of stating.....what his invention really is.....so that they may know what they are not -
That is claims type language.
MR CATTERNS: Exactly, your Honour. So our submission is that the idea of describing and ascertaining the nature of the invention in the old law meant claims.
GUMMOW J: And then he says, "The second condition - - -
McHUGH J: What he called "The second condition" was really the sufficiency.
MR CATTERNS: What I call sufficiency, your Honour, yes. So, although it did not matter in that Patent Gesellschaft Case, which was precisely about sufficiency, how to make the boat to carry sheep to the Middle East and get food on conveyor belts past their pens, the words "the nature of the invention" which appear in his Honour Justice Carr's little passage at the top of page 10 are historically derived from the claim part of the requirement in the 1852 Act. So we submit that the content now of the requirement of sufficiency, namely to fully describe the invention, is to tell you how to do it and has nothing to do with defining it in terms of essential features or integers. That is a requirement of claims.
McHUGH J: That was the problem in the SA Brush Company Case.
MR CATTERNS: Could not make it.
McHUGH J: They did not want anybody to know how to make them.
MR CATTERNS: They did not tell you how to glue the brushes in, your Honour, yes.
McHUGH J: Yes.
MR CATTERNS: Valensi, which is the other one of the cases cited, is another one of the cases cited by his Honour Justice Carr.
GUMMOW J: What happened in Valensi? What was the defect in it?
MR CATTERNS: That is (1973) RPC 337. That was the colour television.
GUMMOW J: Colour television, yes.
MR CATTERNS: That it was invalid, your Honour, that insufficiency had been established, it being a question of how much - that is the case which discusses, amongst other things, the amount of work that you can rely on the skilled addressee to have to do at page 377. At the bottom of 377 their Lordships say:
Further, we are of the opinion that it is not only inventive steps that cannot be required of the addressee.....he is not to be called upon to make a prolonged study of matters which present some initial difficulty: and, in particular, if there are actual errors in the specification - - -
GUMMOW J: Yes. Now, is there any question of inutility in the present patent?
MR CATTERNS: No, your Honour.
GUMMOW J: So there is no question that it will not work unless it has the permeable material or pervious material?
MR CATTERNS: My answer to your Honour's question is, that is right, but, of course, your Honour, a utility is something within the claims is not useful.
GUMMOW J: Yes.
MR CATTERNS: Your Honours, this Court in a highly different context recently of the constitutionality of the plant breeders' rights, Grain Pool of Western Australia v Commonwealth (2000) 46 IPR 515, in paragraph 78 paraphrased, for different purposes I accept, your Honours, section 40(2)(a) as:
The requirement that the patentee sufficiently specify the working of the invention -
and, your Honours, that is what we submit this is about, that was what Valensi was about and that is what Edison & Swan was about. May I remind your Honours that, as their Honours Justices Wilcox and Branson point out, impermeable flaps are useful, Proctor and Gamble sold them.
Your Honours my proposition about section 40 - sorry to go back there - is that the words "the nature of the invention" do not appear and I tried to explain why they have not been part of Australian law since 1903. They were in there in relation to the provisional, as a historical matter, and it is the provisional that was dealt with by the Dean Report, as I will come to later, your Honours. A further proposition about section 40 is that the words "essential features" do not appear.
As I have submitted to your Honours, if our friends were right and you have to say in the body of the specification, give a direction or state what is essential, then dependent claims would not work. A minor point, perhaps, but just as a matter of context, in section 40(2) itself, the concept of dependent claims appears. It relates only there to petty patents because with a petty patent you must have only dependent claims. You are only allowed three claims and the second two must be dependent, so my proposition is that - we have made submissions already about the difficulties for dependent claims if our friends in the Full Court are right, well, here are dependent claims being expressly contemplated.
Your Honours, a further proposition that we get from section 40 is that the requirement of sufficiency (2)(a) is an entirely distinct requirement from "fair basis", subsection (3). Your Honours remember that the other context in which fair basis arises is in arguments about priority date which is section 43 and regulations - I do not need to go to them - regulations 3.12 and following.
So we submit that just as a matter of statutory construction we are right in submitting that there are two distinct functions performed by the document as a whole, "describe" and "define", and a particular part of it does the task of defining. As to statutory context we have submitted that dependent claims are expressly there.
Further, your Honours, the Act, of course, expressly permits and worldwide practice does too, amendment and your Honours have seen how we have amended here. Under amendment, at the very least, you can amend to narrow your claims. The provisions are, your Honours, section 104 for amendment in the office. Section 105 is for amendment directed by the court which is done when there are proceedings on foot and the requirements for amendments are in section 102.
So, your Honours, if you can amend that contemplates that you might narrow your claims which means that you might add further integers which become essential but you cannot change the body of your specification with impunity to rewrite it and say, "Yes, we here couldn't rewrite our body of the specification and write another paragraph and say, `Look although the preceding paragraph says and/or', we now decide that they must be liquid permeable", because you lose your priority date and that is what section 114 says.
Also section 102 says you cannot claim a matter "not in substance" disclosed in the specification as filed. So the whole regime of amendment contemplates narrowing and it is foreign to that idea that you have to write in the body of the specification as opposed to the claims a little treatise on what is or is not essential.
Finally, your Honours, just as a matter of context, this Act - and our patent system is part of an international system which we see in Chapter 8 sections 88 to 96. The Patent Co-Operation Treaty under which we treat a document filed under the Patent Co-Operation Treaty we deem it to be an Australian application if the conditions are complied with.
Also under the Paris Convention we undertake to our colleague member States that they will have a year of priority so people can write a document for the purpose of the United States, Canada, England, Japan and they will be given priority here but they have to comply with Australian requirements. Our submission is that for us to have a requirement that you specify in the body of your specification what is essential is out of step with the rest of the world.
Your Honours, may I go quickly to the patent itself in appeal book 1, page 184. I just remind your Honours that we can see from the first page, the abridgment, which I think is prepared by the office, at line 10 there is priority data, which shows us claiming convention priority of the 2 July 1984, based on a US document. You have a year under the Paris Convention to apply. That is why up a little higher on the right, "Application Date: 28.06.85", we did it a couple of days before the expiration of the year.
Your Honours, we have gone to page 187, the discussion of the prior art, and 188, the summary of the invention, which I accept describes the flaps but does not narrow it to fluid pervious. I will not go through the detail of the two embodiments that I have described, but there are two, perhaps three, construction issues that we would like to touch on briefly. The first is, there are two embodiments, one of which is a little more complicated in figures 3 and 4. We submit that as a matter of ordinary reading of this document, the crucial paragraph - I say "crucial" because it is what from the ratio of the decision below - at page 190 applies to both embodiments. His Honour Justice Tamberlin did not agree, and we respectfully disagree with his Honour. Their Honours Justices Wilcox and Branson said it was an open argument on available construction that that paragraph applies only to the second embodiment.
GLEESON CJ: Is it material to the construction of the document that we happen to know that pages 1 to 4 were prepared in a context of a document that was going to propound claims in the form of those made on page 304 of the appeal book, and that when they made the amendment in response to the communication from the examiner and narrowed the claims to relevantly what was originally claim 2, they just sent in new pages 5 to whatever, and left pages 1 to 4? Is it material of the construction of pages 1 to 4 to know that that was their origin?
MR CATTERNS: I will find the section in a minute. I have forgotten the number of the section, your Honour, under this Act that says you are allowed to consider the specification before amendment as a matter of law. But I am not certain what difference it would make because it is not really a matter of ambiguity on page 4 that is going to be resolved by our knowing. I think I would like to put it higher, your Honour, but I have a feeling we cannot because we really submit that it is not a matter of ambiguity on page 190 to be resolved by knowing the claims or even knowing what your Honour put to me.
GLEESON CJ: As I would understand it, if the argument against you is right, suppose there had been no question of novelty raised and the claims had remained in their original form, and then there was an allegation of infringement based on claim 2 in the form of the original document, if the argument against you is right, then it would have been impossible to succeed.
MR CATTERNS: Impossible, yes, because it is insufficiently described. That is right, your Honour. I mean, I do not want to put it as floodgates, but we cannot see how that does not follow from the reasoning. I will give your Honours a reference to that section in a minute, if I may.
GUMMOW J: What does the section say?
MR CATTERNS: It is section 116, your Honour:
The Commissioner or a court may, in interpreting a complete specification as amended, refer to the specification without amendment.
We are not submitting, your Honours, that passage 190 is ambiguous, cleared up by the claims, which is what Justice Tamberlin held, and which we do not embrace.
It is relevant to understand all the matters his Honour the Chief Justice put to me, but we do not submit it is an easy way out of, in effect, making that paragraph read as if it were compulsory rather than optional.
The other construction issues, which probably do not matter, are our first submission is that this paragraph, just as a matter of reading the document as a whole, which talks about flaps from start to finish, when it says "the flap material" on page 190, it is the flap material of either embodiment. Your Honours can see by looking at the diagrams that there is no difference in principle between the two diapers. There is a more complicated one in figures 3 and 4 at page 195 with a sort of a trapdoor effect with bigger flaps. So we submit that just as a matter of construction, this paragraph refers to both embodiments, in other words, the whole of the invention.
The word "preferably" does not help us much, if at all, because of the "and/or fluid permeable". May I make it clear that there is no doubt that fluid means liquid in that context, as in bodily fluid. Our submission is that "preferably" the adverb qualifies the verb "is" rather than the adjectives "soft, conformable", et cetera.
McHUGH J: Justice Burchett.....only "soft", did he not?
MR CATTERNS: Yes, that is right, your Honour, but we submit that the adverb there is qualifying "is". We see the other construction to be candid but we submit that "is" is the verb. How definitely? Preferably. "Preferably is" you could write it. Each of the following then, because it is soft, is vapour and/or fluid permeable. But in the end, your Honour, that does not get us a direction, if that is what is required, to be fluid permeable. The final matter of construction is that the paragraph goes on at 190 and says:
A suitable material -
The teaching does not stop there or the sufficiency, and we are talking about the flaps -
made of a fine mesh with a basis weight of -
so-and-so -
and may be a spunbonded diaper liner of the type used through the diaper.
By no means compulsory that it must be but it may be and, your Honours, we do know that the liner is liquid pervious. That is what it is all about, letting bodily wastes go through the liner quickly into the absorbent material. We are told that expressly at page 188, line 36, "includes the fluid pervious diaper liner", and we know the claims say that.
McHUGH J: Could you just assist me. Questions of inutility and insufficiency often overlap, do they not, in the sense that one can prove inutility by showing that the invention as claimed will not work even with a modification that would be available or could be expected of a reasonably skilled person?
MR CATTERNS: Yes.
McHUGH J: Does it throw any light on the question of sufficiency in a case like this?
MR CATTERNS: Your Honour, they often relate it in that similar facts might be, as here, the same problem that our friends saw is pleaded under a number of headings but, your Honour, strictly speaking, they are a different idea because - - -
McHUGH J: They are a different idea. I understand that.
MR CATTERNS: Because in the utility case it assumes that you are sufficiently taught how to make the device. You follow the instructions to the letter and there is the perfect device but it does not work in the sense of pump water or plough ground or cure cancer. So that is what inutility is.
McHUGH J: Well, it will not work as described. It will not work with such modifications as would appear to a reasonably competent - - -
MR CATTERNS: Yes, your Honour, the skilled addressee makes it out of the right material, does not make it out of timber and so on.
GUMMOW J: But there was an inutility argument here. It is dealt with at 379.
MR CATTERNS: Yes, your Honour, but, I mean, there is none alive in the case; that is why I answered your Honour's question the way I did.
GUMMOW J: I see, yes. Was that a ground in the Full Court? Was it agitated again in the Full Court, inutility?
MR CATTERNS: I do not think so, your Honour.
GUMMOW J: Right. I just wanted to be clear, that is all.
MR CATTERNS: May I check that and answer your Honour properly? Your Honours, the remaining matter of construction in the patent - I do not think I have quite finished - our submission is that the passage at 190:
may be a spunbonded diaper liner of the type used throughout the diaper -
does provide some further teaching to the skilled addressee because the skilled addressee sees that it may be, so again it is not compulsory, but sees that the flap may be pervious because of that because the one thing that is for sure is that the diaper liner is itself fluid pervious. Your Honours, at 189 - and this is an argument rejected by his Honour Justice Tamberlin, not touched upon by the majority - talking about the "elastic means", your Honours, at 189 that hold the flaps up to make the inner containment barrier:
Elastic means 15 therefor serves to reorient the flap 14 in relation to the rest of the diaper profile and elastic length and strength.....is dependent upon the textile of the liner -
So that is again a teaching in part and not compulsory that the flap may be made out of the liner material in which case it would be fluid pervious. As your Honours can see from the drawing, perhaps best at 194, where you can see that it is the liner material that goes along and then is bunched up to form the flap and then goes along and is bunched up to form the next flap. So again, your Honours, I accept that it is not compulsory but it is there at least described in a way that a skilled addressee would read as being pervious.
GLEESON CJ: Mr Catterns, I am not questioning this, I have no basis on which to do so, but the entire argument is proceeding upon the assumption that material could be vapour permeable but impervious to fluid. I assume that assumption is scientifically valid?
MR CATTERNS: I think so, your Honour. I suppose it depends on the size of the - I am saying this from the Bar table. I will see if I can find something about it. It depends on the size of the molecule.
GLEESON CJ: I am not intending to doubt it. I just note, however, that that is the assumption that is the basis of this entire problem.
MR CATTERNS: That there is a dichotomy.
GLEESON CJ: The problem relates or arises from the use of the expression "vapour and/or fluid permeable" and it is assumed that something could be vapour permeable, but fluid impervious.
MR CATTERNS: Yes, your Honour. I think that is right, your Honour, and I think I am right in saying that is the assumption that has been at the basis of the case from day one. I cannot say that they mean the same thing. Your Honours, may I go to their Honours' reasons in volume 2. Your Honours, utility was not answering his Honour Justice Gummow, utility was not in the appeal.
GUMMOW J: Thank you. Assume for a minute that you were successful here, just assume that, what then happens? Justice Tamberlin has decided the whole case, has he not, the whole appeal? He had to, really.
MR CATTERNS: Yes, because he was with us on sufficiency.
GUMMOW J: Yes.
MR CATTERNS: Your Honours, I imagine it would be relisted before the Federal Court.
GUMMOW J: Different bench, same bench?
MR CATTERNS: I imagine the same bench, your Honour, their Honours being, in effect, part heard, and that there would be a little timetable for written submissions.
GUMMOW J: No doubt your opponent would encourage Justice Tamberlin to change his mind.
MR CATTERNS: Well, yes, but may I reserve for another day whether they are allowed to do that, your Honour?
GUMMOW J: Yes.
MR CATTERNS: They may well be, in light of your Honours' reasons in this case.
CALLINAN J: Justice Tamberlin is not part heard. I know it is a dissenting judgment by him.
MR CATTERNS: Yes.
CALLINAN J: He is not part heard.
GLEESON CJ: We have no authority to direct the administration of the Federal Court. I am not sure exactly what their Act provides as to which judges sit on which cases, but presumably there is somebody who decides that, not us.
MR CATTERNS: Yes, your Honour. That is right, your Honour. My submission is that the order should be remit and then we work out the procedure in the Federal Court. But, subject to what his Honour Justice Callinan put to me - - -
GUMMOW J: It does indicate the wisdom in hearing the appeal and determining it in this sort of case.
MR CATTERNS: Fully in the Full Court. Yes, your Honour.
GUMMOW J: Particularly construction issues. Anyhow.
MR CATTERNS: Yes, your Honour. Your Honours, we are not asking this Court to do more work than it has already been asked to do, but we imagine that what the Court says on the question of essential features and sufficiency may have a large impact on fair basis issues, may have.
GUMMOW J: That is what worries me.
MR CATTERNS: Yes.
GUMMOW J: Why should we get into fair basis questions?
MR CATTERNS: I am not asking your Honour to, but, your Honours, if this Court, for example, applied the passage in CCOM which criticises the essential features approach in the context of fair basis, that would give it further authority, of course. Your Honours, if I may just go to - - -
CALLINAN J: I must say it does not seem - I agree with Justice Gummow - it does not seem very satisfactory, does it, that it was obviously an important case, a dissenting judgment, it had to be a very real possibility that it would come here. It is extraordinary that the other judges did not decide these other points that were fully argued. I mean, it is not your fault, but it is very, very unusual, given the nature of the case and the commercial interests involved.
MR CATTERNS: Yes, your Honour. I think the two critical issues that remain are this Beckestrom novelty argument and fair basis, and infringement, as my friend reminds me - which is by no means a minor issue, of course.
HAYNE J: There is no contention that the orders made by the Full Court are to be supported on alternative bases?
MR CATTERNS: No, your Honour, I do not believe so.
HAYNE J: But you say, as I understand it, that the matter ought to go back.
MR CATTERNS: Yes, your Honour.
GLEESON CJ: Why is that?
HAYNE J: Why? Absent contention? Because it leaves us in the position, does it not, where we decide one issue, which as I understand your contentions thus far, reflect, perhaps directly, perhaps only indirectly, upon other issues debated in the Full Court? What then happens? They go back to the Full Court, they decided there, you come back here? It does not sound to me to be desirable, and by no means certain that it is the inevitable consequence, which you accept.
MR CATTERNS: Well, your Honour, although that would seem to be advantageous to my client, I am hesitant to embrace it because we have made it clear, including at the application for special leave, that we thought remitter was the way to go, as had happened in Ramset, in different circumstances.
GUMMOW J: We had a similar problem in Ramset. That is why I am somewhat distressed that it has come back again. I know it is not the parties' fault, the parties.....justice.
MR CATTERNS: It would be fair to say that the reason our learned friends have filed no notice of contention is that we said on the application for special leave fair and square that we thought remitter was the way to do it, and to be candid, we partly did that because we wanted to make it clear to this Court that there was a discrete issue, as a matter of forensic. I think it was true - - -
HAYNE J: But the very problem is whether that assumption, that the issue can be isolated and put into its box, is right.
MR CATTERNS: Your Honour, I respectfully submit there is no doubt about that as a matter of law; it is a discrete issue. Of course, the reasoning of the High Court in getting to issue A - - -
HAYNE J: The nose of the cat peeped a little out of the bag, Mr Catterns, when you suggested that what was said in this Court might perhaps be of influence in the way the Full Court disposed of it.
MR CATTERNS: It would be your Honour, but we are not asking for any free kicks, your Honours.
HAYNE J: I thought that is what counsel were employed to do, Mr Catterns.
MR CATTERNS: Well, it is hard enough to win the instant issue of sufficiency, and we would be very satisfied with that. I submit that the procedural issues, although I accept, with respect, what has fallen from your Honours about undesirability, but the procedural issues can be dealt with satisfactorily, we would submit, in the Full Court.
GUMMOW J: Anyhow, I took you off your course - - -
MR CATTERNS: I was just going to go briefly to their Honours' reasons at 398. They said in paragraph 2, that it is purely section 40(2)(a), making it clear, your Honours, it has nothing to do with fair basis. This is page 398, paragraph 2. So it is just the full description question, which their Honours then set out. Their Honours quote a passage from his Honour Justice Gummow in Rehm v Websters, which, we respectfully submit, shows the distinction between the two different tasks, namely, the description telling you how to do it, and the claim marking out the monopoly.
GUMMOW J: Well, there is a useful and succinct description in the fourth edition of Blanco White's work on patents for inventions at paragraph 2.102. There is no need to take us to it.
MR CATTERNS: Thank you, your Honour.
GUMMOW J: It was not invented in Rehm v Websters.
MR CATTERNS: Yes, your Honour. Can I just pause for one thing. In reading the English text there is a little bit of difficulty - - -
GUMMOW J: Well this is before the 1977 Act, that is why I referred to the Fourth Edition.
MR CATTERNS: Yes. Then, your Honours, there is the quotation of the passage from the Patent Gesellschaft Case in paragraph 6, and we have given your Honours hurried analysis of where that comes from, which is essentially section 9 of the 1852 Act. Your Honours, then there begins this discussion of the specification. Your Honours, in paragraph 8 their Honours say:
As the section of the specification headed "Summary of the Invention" makes clear, the claimed invention relates to the "faecal containment flat" rather than to the "unitary disposal diaper with elasticised legs" itself.
We would respectfully disagree that that is a fair summary of the invention, because it describes it in words very clear that it is an elastic leg unitary disposable diaper, which has an elasticised flap. Your Honours, occasionally, we respectfully submit, there is a confusion between inventive step, which is the provision of the flaps, and the invention, which is the product being the diaper.
GUMMOW J: Yes, now, that may be right, but how do you give all that some legs, the distinction between invention and inventive step?
MR CATTERNS: I get that, your Honour, by - - -
GUMMOW J: Because, it may be in your opponent's submissions too, and if it is you have got to deal with it. That is why I took you to paragraph 10, I think it was, of your opponent's submissions.
MR CATTERNS: Yes, well I get that because "the invention" is defined in the Act: Section 40(2) says:
(a) describe the invention fully -
"Invention" is described, and we know what it is, "any manner of new manufacture the subject of letters patent", section 6 of the Statute of Monopoly.
GUMMOW J: You get that from section 3, do you, of the schedule?
MR CATTERNS: From the schedule, your Honour. As your Honours know, on the same opened pages, exploit draws the distinction between the invention being a product and the invention being a method or process. That word does not mean inventive step. Your Honours, in section 18, a "patentable invention" is an invention:
that, so far as claimed in any claim:
(a) is a manner of manufacture -
and:
(b) (ii) involves an inventive step -
so they are different concepts. Your Honours, we know that in section 7(2)-
GUMMOW J: Well, just look at 18(1): a patentable invention; so you may have an invention which is not patentable.
MR CATTERNS: That is right, your Honour, if it does not involve an inventive step, say, or is not novel.
GUMMOW J: The invention though is what is "so far as claimed".
MR CATTERNS: Yes, your Honour. So you can describe an invention and claim something narrower, but it is a distinct concept from inventive step.
GUMMOW J: But what is the section which gives you your monopoly?
MR CATTERNS: Section 13 says we have the exclusive right to exploit the invention, and your Honour remembered the definition of "exploit" a minute ago and now, as your Honour knows, authorise. So that is a concept of invention, whereas the concept of inventive step is one particular ground under which an invention is not patentable or is patentable. It is explained in a little more detail in section 7(2), the familiar test:
involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge -
So I submit as a matter of statute it is a different concept, invention and inventive step. Nowhere do we see in section 40 a requirement to state the inventive step. There are many authorities, including AMP v Utilux and the British United Shoe Machinery Case, which we have given a reference to, I think, which say you do not have to say what your inventive step is.
It, of course, follows from Sir Keith Aickin saying in VR v Wellcome Laboratories that an invention - it is my favourite phrase - can be remembered from a dream. I might not even be in the field of endeavour and come up with a clever idea remembered from a dream, so I do not know what the common general knowledge is in Australia. I do not if I am a foreigner. So I do not know what my inventive step is. I might not be aware of some prior art or, if I am a foreigner, I might not know that the art in Australia was less or more developed.
So it cannot be and has never been the requirement that you state - it certainly has never been since 1903 in Australia - what your inventive step is. That is not to say that if you do say something which is false if you are distinguishing yourself from the prior art in a conventional way and you tell a lie, that you might not be invalidated for a false suggestion, but it is not a requirement to state the inventive step. I hope I have answered your Honour's question.
If I may just return to page 400, paragraph 9, their Honours note, as it were, without deciding the little debate about whether the description of the flaps covers both embodiments. Then their Honours quote the paragraph, page 10, and say - and we must agree, of course - in paragraph 11:
There is, in our view, nothing ambiguous about the expression "vapour and/or fluid permeable" -
and, of course, logically they are the three possibilities. This is where we respectfully submit there is something more than a straw man. This is their Honours' reasoning. Their Honours say at the top of 401:
The expression cannot fairly be interpreted so as to call necessarily for a material which is fluid permeable.
That is right:
That is, on one available construction of the specification, it says nothing as to an essential feature of the claimed invention -
Your Honours, that is the construction that the passage only refers to the second embodiment that their Honours refer to in paragraph 9.
GUMMOW J: I am sorry, I do not follow that.
MR CATTERNS: It is difficult to see, your Honour, but we submit it is this. Their Honours say "on one available construction" the expression "says nothing as to an essential feature" because it is only describing the second embodiment, their Honours say.
Your Honours see the words "available construction". That is the same words that their Honours have used - well, I beg your pardon, not exactly but I take it - - -
GUMMOW J: It does say something.
MR CATTERNS: That is our submission. Yes, your Honour.
GUMMOW J: It does not say enough.
MR CATTERNS: That is what their Honours go on to say. They say "it is misleading". I take what their Honours mean by misleading is you are not saying it is essential if you describe three alternatives.
GUMMOW J: Where does the word "misleading" appear?
MR CATTERNS: In line 5, your Honour, just in the last line of that paragraph.
GUMMOW J: I see. Thank you.
MR CATTERNS: I am not sure, we are not sure but we submit that their Honours must be referring to the three options that their Honours have just set out. But your Honours can see there that their Honours are, as it were, requiring the body of the specification to say something about what the essential features are.
May I just stop, your Honours, for one moment. The idea of essential features comes from a different area of discourse in patent law. It is infringement. You infringe a patent if you take all the essential integers or essential features. Essential integers is the usual term. If you do not take them there might be an argument about whether the feature is an essential integer or an inessential integer. Is there a mechanical equivalent, a bolt instead of a screw, et cetera.
GUMMOW J: There is a debate here, is there not, about coterminous in claim 1.
MR CATTERNS: Yes, your Honour. Yes, that is an example in the context of infringement about whether the essential feature is taken wholly, literally, in substance, questions such as arise in that CIG Case and so on. In addition to infringement, of course, because the usual test for lack of novelty is reverse infringement, namely whether the alleged anticipation possesses all of the essential integers, it is bringing it over to this territory, we submit, that is the legal error. The claim has the job and only the claim of defining the invention, ie saying what is essential. Then their Honours go on and say that:
The fact, as his Honour noted, that the claims defining the invention are confined to articles with "fluid pervious flaps" is not, in our view, of assistance in determining whether the complete specification describes the invention fully.
We respectfully disagree. Our submission is you can read the document as a whole and you must remember that the function of definition is the job of the claims.
Then their Honours deal with the possibility of using a claim to fix up an ambiguity. We accept that this is not a case of that. It is not a question of tidying up an ambiguity and that is why we respectfully do not adopt his Honour Justice Tamberlin's reasoning.
But their Honours go on at line 21:
this is, as we read it, a specification in which the requirement -
and it is their Honour's emphasis -
that the flaps be liquid permeable appears for the first time in the claims -
So, your Honours, their Honours are saying that you have to state for sufficiency in the body of the specification the requirement. So that is the same idea, we submit, as appears in the essential features of 11.
Your Honours, may I come back to 13 and 14 in a second. Your Honours can see that it is not a step in their Honours' reasoning. Their Honours are putting aside a finding of his Honour Justice Burchett and they say, at least so far as fair basis goes, they disagree with that finding but that disagreement with it is putting aside something that would help us rather than being a plank in their Honours' reasoning. May I come back to it, your Honours?
Finally, in paragraph 15, their Honours say:
We consider that the complete specification does not "describe the invention fully, including the best method -
your Honours, this is not a question about best method, this case. There is no better method identified, as there was in the Rescare Case that we give a reference to, his Honour Justice Gummow -
The complete specification does not disclose to a person who may wish to make the invented product after the patent has expired how the product should be constructed. It would not instruct a reader.....that an essential feature of the invention was the necessity for the flaps to be "fluid pervious" -
and then there is a reference to the Sam S Svendsen Case. May I go to Sam S Svendsen in a moment. We were just going to do a couple more things, your Honours. So, we submit that it is clear that their Honours' ratio is that the body of the specification must state what is essential. We submit that is wrong because that is not the function of describing, it is a function of defining, and secondly, because you can look at the document as a whole.
Your Honours, so far as the facts go - the little factual matter that is in 13 and 14 - his Honour Justice Burchett did indeed make that finding, and the word "unhesitatingly" is perhaps a little too emphatic, but may I just mention this, your Honours. Their Honours go on - that is Mr Butler. May I remind your Honours that he was the only expert who gave evidence. The respondent did not call, or did not end up reading evidence which had been filed by experts. It discloses a successful disposable nappy product which had liquid impermeable flaps. That is true. That was the Proctor and Gamble matter, and what that shows is you can make something with liquid impermeable flaps which is useful. So you get a little benefit out of patent description and do not infringe the claims, if that is what you want to do.
The finding, with respect to their Honours, to say:
and that the respondent has since 1993 utilised an "impervious flap material" in disposable nappies in Australia -
with respect, that is not a fair reading of the evidence. It is very clear that what happened in Australia was this: we had flaps made out of the same material as the liner, very pervious. They changed to less pervious. A document uses those words, "impervious", but the evidence was completely clear - and I will give your Honours the reference to it. That was to mean relatively, having gone from the totally pervious material previously.
We do not think much turns on it, but if I could just give your Honours the references to that. At pages 74 to 89 there is a quite lengthy cross-examination about the document that uses the words "liquid impervious, our product in Australia", at the end of which the witness says, "I say that our product comes within the claims of the patent, that is, liquid impervious". That is at page 89.
GUMMOW J: Page 89?
MR CATTERNS: Yes, your Honour. Liquid pervious. He says, line 4:
I am saying that our flaps are caught by the Enloe patent.
That is, that they are liquid pervious.
GUMMOW J: What is the Enloe patent?
MR CATTERNS: That is the patent in suit, your Honour.
GLEESON CJ: Mr Enloe was the inventor. Mr Enloe was the man who came up with the better mouse trap.
MR CATTERNS: In America, yes, your Honour.
GUMMOW J: How can he say that? You cannot have evidence like that.
MR CATTERNS: I beg your pardon, your Honour.
GUMMOW J: How does that sort of evidence get in these days?
MR CATTERNS: My learned friend, Mr Bannon, asked the question, your Honour, because he was asking over the preceding pages about a document which I will just show your Honours.
GUMMOW J: I see, it was in cross-examination.
MR CATTERNS: Yes, your Honour. The argument was whether or not our flaps were - the Australian product was liquid pervious. In the end it is irrelevant, but I am dealing with it because their Honours do. So I just refer your Honours - that whole cross-examination goes between 74 and 89. Your Honours, it relates to a document where we changed our specifications, at page 244 in volume 2, where we were changing our product in 1993 to what is called here "Taller Hydrophobic Flaps", but your Honours can see that it is a relative matter in the next paragraph:
The flap material is being developed by Albury -
and there is a certain hydrohead - that is a head of water that the material will support. "Lower leakage levels", your Honours see. And at the top of the next page, which are the words their Honours quote - - -
GUMMOW J: Is this product marketed under the trademark Huggies, is it?
MR CATTERNS: Yes, your Honour. Our friend's Baby Sitter.
CALLINAN J: Huggies and VIP, is it not?
MR CATTERNS: Yes, your Honour. Your Honours, the words on the next page - I am doing this quickly because we think it is irrelevant - the second paragraph is, "The impervious flap material", and Mr Butler was cross-examined about that out of those pages, 74 to 89. He said it was a relative matter. So, your Honours, we respectfully submit that that really goes nowhere in terms of their Honours' reasoning on page 14. His Honour Justice Burchett, we submit, was dealing with a slightly different question. He was dealing with some evidence of Mr Butler at page 204. At 204 - this is at the end of the first volume of the appeal books, your Honours - this passage at 204 paragraph 10 is the source of his Honour Justice Burchett's finding about "unhesitatingly". He says at 10:
claim 1.....states that the flaps are "fluid Pervious". This limitation is, in my opinion, merely a reflection of a limitation which would ordinarily have been made by a skilled addressee after reading the KCA Patent.
When their Honours Justices Branson and Wilcox attacked that finding, with respect, they failed to notice that it is about - and talk about what happened to Proctor and Gamble in 1989 - their Honours failed to notice that this evidence is about what you would do when you have read the relevant patent and the fact that somebody else has chosen something liquid impervious elsewhere is irrelevant. This passage, your Honours, on 204 is the passage that explains that there is a balance between the function of acting as a barrier but yet not trapping fluid between the baby's skin and the flap.
So, your Honours, that is why we respectfully submit that paragraphs 13 and 14 do not carry the matter any further. That evidence would be relevant if we come back on "fair basis". Your Honours, we respectfully submit that their Honours did as their ratio hold that our specification was inadequate because it failed to, in the body, state that the flaps were essential.
As we have submitted, your Honours, we say that, first, as a matter of statutory construction of section 40, as we have gone to; secondly, your Honours, we say it as a matter of authority, and we just wanted to take your Honours to three cases on that. May I remind your Honours, sorry, that that exhibit that had the words "impervious" was many years after the priority date, nine years after.
Your Honours, the first case we wanted to take your Honours to is the AMP v Utilux Case 45 ALJR 123, noting, your Honours, of course, that the case would have been extremely well argued on both sides and reminding your Honours that it is his Honour Justice McTiernan in the South Australian Brush Case many years before. That is cited also in Patent Gesellschaft. Your Honours, it is a case about an electrical connector, I think, and at 127, right-hand column, his Honour Justice McTiernan sets out the particulars of objection and your Honours can see there is, under the 1952 Act, a sufficiency argument and this what we rely on, your Honours. His Honour says, at about F:
The first objection there stated is that the specification does not fully describe the invention. That objection based on s. 40(1)(a) -
it is now (2)(a), your Honours -
requires the following observations. This provision is substantially different in its wording from the equivalent English provision -
crucially, your Honours -
"Describe" does not mean "define", which word is reserved for s. 40(1)(b). The description is required to be in the whole specification including the claims and illustrations. "Invention" does not have the meaning which is given it in s. 6.....and it does not mean "inventive step". I take it to mean "the embodiment which is described, and around which the claims are drawn" -
that partially answers what his Honour Justice Gummow raised with me. Then there is discussion of "inventive step", your Honours, and at the top of the left-hand column on 128, his Honour says, at B:
It follows that the inventor is not required by -
what is now (2)(a) -
to give the inventive step -
citing Raleigh Cycle.
Your Honours see "best method" is discussed in the next in the next paragraph, the second objection, and his Honour says:
It should be noted that strictly speaking this is part of the requirement considered previously, as the Australian Act uses the words "including the best method....."
and we made a submission of that kind earlier, your Honours.
Then his Honour discusses questions of whether or not you need more description where there is a process versus a product. Then at the bottom of that left-hand column on 128 says:
infringement -
in the case of a product -
can be shown by comparing the attributes of an allegedly infringing article with the elements of the claim. I cannot accept the submission of the defendant that if it is possible to comply with the directions given in the body of the specification for "performing the invention", that is making the article, and yet not to obtain a product which complies with the requirements of the claim, then the specification is invalid for insufficiency.....far too wide -
Now, that is exactly the case here, your Honours, because our friends say - - -
GUMMOW J: So, where are you reading from, Mr Catterns?
MR CATTERNS: The bottom of 128, the left-hand column, your Honour, where his Honour says, five lines up, "I cannot accept".
GUMMOW J: Yes, thank you.
MR CATTERNS: That is the proposition, your Honour, that you can comply with the directions in the body and choose the impermeable option and, yet, not obtain a product that complies with the requirements of the claim, say our friends, and his Honour says that proposition that that would give you insufficiency is far too wide and, as we have submitted today, would result in successful attacks on a very large number of existing patents, because you do not always claim everything that you describe, as his Honour goes on, if I may skip B, C and D. But there is a quote from the No-Fume Case which is a classic "how to make it" sufficiency case; but then, your Honours, crucially at E, his Honour says:
In my opinion it is appropriate here to note that the objection of insufficiency is concerned only with enabling addressees amongst the public, on the expiration of the patentee's monopoly, to successfully use the specification for their own purposes. It is not concerned with the delimitation of the patentee's monopoly. The description of the invention is not the definition of it -
quoting it from EMI Ltd v Lissen -
"A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly -
Then his Honour says:
The method of manufacture is no part of the patentee's monopoly unless it is claimed.....This distinction between directions for performing and delimitation of the monopoly granted was not always clear because the English Act before 1949 contained as a ground of objection "that the complete specification does not sufficiently and clearly ascertain the scope of the monopoly claimed" -
and then your Honours see the definition. His Honour goes on:
The practice of referring in a claim to the body of the specification.....can also lead to -
problems. But then his Honour quotes, at the top of page 129, left column, the passage from Lord Justice Lindley that we have taken your Honours to and then his Honour says at B - your Honours, I was wrong about that, by the way. Edison's patent was held to be sufficient.
GUMMOW J: That is what I thought.
MR CATTERNS: Yes, contrary to what I said to your Honour.
GUMMOW J: Thank you.
MR CATTERNS: Your Honour see in B:
With respect it cannot now be doubted that it is the claims alone which define the monopoly.
His Honour seems there to be disagreeing with Lord Justice Lindley, but when it is understood, with respect to Justice McTeirnan, that Lord Justice Lindley was dealing with the old Act before the requirement for claims, his Honour is not really criticising Lord Justice Lindley, but it is clear "that it is the claims alone which define the monopoly", and his Honour goes on at C criticising the text Terrell, that there is:
no reference to the claim as a distinct portion with a special function -
So, your Honours, we respectfully submit that that is on all fours, though, of course, not binding, is utterly cogent and consistent with our submissions, and it is one of the cases cited in support of the passage from Patent v Gesellschaft.
Your Honours, there are only two more cases we were going to take your Honours to. The next is the Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588. Your Honours, we need to go quickly to the judgment of Justice Menzies to show a proposition that is upheld by the Full Court.
May I remind your Honours that one of the Justices in the Full Court was Justice Kitto who decided seven years later the Sami Svendsen Case. This was a complicated case factually to understand the hay rake which, if your Honours forgive me, I will not go to. At the bottom of 597 his Honour at first instance, Justice Menzies, is discussing the question of sufficiency and at the bottom of the page refers to a particular passage in the specification which was argued was an attempt to incorporate the claims as part of the description. His Honour says:
It was argued for the defendant that the introduction, by the statement.....of claims going beyond what is described in the body of the specification as part of the description of the invention was an insuperable obstacle to ascertaining the invention -
unless all the claims are the same thing, because you can lead to ambiguity. That is what occurred in the very special case of the United Shoe Machinery Corporation's Application which our learned friends rely on. In that case the patentee eschewed describing large parts of how to do it in the body and said do it in accordance with the claims. The trouble was claim 6 did not include one of the integers of claim 1, so how do you do it? In short, his Honour Justice Menzies distinguishes that here and says at the top of 598:
I consider, however, that in this case -
and this is the proposition that was upheld on the appeal -
it is possible upon consideration of the specification as a whole including the claims, to find a description of the invention and that in so far as any claim does not claim that invention, it is itself invalid -
fair basis, your Honours -
but its inconsistency with the general description of the invention does not totally destroy the specification.
Claim 23 is one of those and that is a claim problem, as your Honours can see. It does not define the invention or not fairly based:
I nevertheless regard the complete specification as fully describing the invention -
As I say, this was for a hay rake which, instead of being towed behind a tractor or a horse, was out at the side which discs, sort of wheels in echelon, with tines on it which acted as a raking function that pushed the hay out to the side rather than just leaving it in lumps at the end of a row. On appeal the Full Court discussed the question of sufficiency beginning at 609 after discussing the specification. In the middle of 609 their Honours say:
Most of the argument before us centred upon the construction of the specification and, as in every patent case, it is necessary to determine from it what exactly is the invention it describes and for which a monopoly is claimed -
EMI v Lissen. Then their Honours set out the section and point out that the requirements have changed from the English Act and from the 1903 Act and then paraphrase the requirements at the top of 610 and at line 3 say:
The function of the claims of a specification has long been well established.....
If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole -
and I remind your Honours that his Honour Justice Burchett made a finding about what you would get from the specification as a whole -
that, of course, is an end of the matter. But this objection is not established by reading the specification in the abstract. It must be construed in the light of the common knowledge in the art before the priority date.
Contrary to what their Honours Justices Wilcox and Branson say, a person who had no knowledge of the prior art in their paragraph 15:
construction of specifications are well known -
Then their Honours go on after citing Kauzal v Lee about questions of ambiguity:
The specification must be read as a whole. But it is a whole made up of several parts, and those parts have different functions.
Which is our submission here, your Honours. Then their Honours go in detail to the specification. At 612 is an important passage where their Honours, after quoting various objects set out by the patentee, say:
At this point in a modern specification one might expect to find a general description of what the inventor asserts his invention consists of, commonly called a "consistory clause". This, however, is not an essential part of the body of a specification. It is not required by the Act. Its purpose may be quite well met by the claims themselves -
If that is right, your Honours, their Honours Justices Wilcox and Branson are wrong because their Honours have held that we are invalid for not stating in the body of the specification that our invention consists of, inter alia, fluid permeable flaps.
You do not need consistory clauses since 1883 because you have claims. Indeed, the usual practice in England is now to use in the consistory clause the wording of "the broadest of the claims". The present Act expressly requires the claim or claims to define the invention and then, your Honours, this is our simple submission. In a patent for a combination such as this the most important function of the body of the specification is to show what are the mechanical means which, operating together, produce the result claimed. Then there is a discussion of particular embodiments, your Honours.
Finally, your Honours, at 614 their Honours deal with the argument based on the United Shoe Machinery Corporation Case that our friends rely on and that was dealt with by Justice Menzies and it shows the passage. The appellant is the party seeking to revoke the patent emphasised this sentence:
"Although I have herein shown and described my invention.....departures may be made therefrom with the scope of my invention, which is not to be limited to details disclosed herein, but is to be accorded the full scope of the claims -
That is a bit of puffing of a kind that one often sees. Their Honours say that is:
little more than a cautiously introduced assertion of the doctrine.....of known mechanical equivalents -
But then their Honours say:
But the appellant -
revoker -
put forward a different view -
and said -
it is not possible to spell out from the body of the specification what is the invention as distinct from the particular embodiment -
you can fix up -
an incomplete description.....by reference to the claims -
if you do it properly. Lord Morton in US Shoe Machinery -
but -
here the claims are so diverse -
as in the United Shoe Case that that is not a way of supplementing the description.
This argument was not accepted by Menzies J. He said that in this case "it is possible upon a consideration of the specification as a whole, including the claims, to find a description of the invention -
and if there is any invalidity it is the claims themselves -
His Honour was, we think, perfectly right in this. The words on which the appellant relies do not really operate to incorporate.....body.....which appears for the first time in the claims -
So, your Honours, that is a case where there was a wide range of claims with many differences among them yet it was held that reading the specification as a whole gave you a full description.
Your Honours, the case cited against us by their Honours is - and this is the last case I was going to take your Honours to - the Sam S Svendsen Case[1968] HCA 65; , 119 CLR 156. May I just make a general statement about this case. First of all, his Honour Justice Kitto decided it, and his Honour was in Welch Perrin. Secondly, your Honours, this is a case which turns upon a distinction in patent law which is a non-statutory distinction and, in another case we would argue, is not a valid distinction, which is a distinction between a combination and an improvement.
There are plenty of cases, including Welch Perrin itself, which say you could have an invention for a combination, of which all of the integers are known and it is inventive to put them all together. But his Honour Justice Kitto draws a distinction here, as the High Court did in an earlier case, May v Higgins, which we give your Honours a reference to, and indeed Clark v Adie, the very old case about pith and marrow talks about this distinction, namely, a distinction between a mere improvement to a known machine, or a known thing, as distinct from a combination.
Whether that is a valid distinction, that non-statutory distinction is a matter you would reserve for another day, but the ratio of Sam S Svensden is, we submit, that it looked from a reading of the specification that the patentee, or the applicant to the patent, was saying, "My invention is the whole of this sausage casing holder for holding a sausage casing so that the meat could be stuffed into it, rather than them all being all shrivelled up and lying on the floor when they got tangled up with each other", whereas, as a matter of fact, as the evidence showed, the invention was not the whole of that thing, but the mere provision of a little tab which would let you pull it on.
So his Honour Justice Kitto, it is fair to say, I think, with respect, thought that the conduct of the patentee was inappropriate and his Honour downed it on every ground known, including some discretionary grounds, inherent grounds. But the basic ground is that there was a failure to state, and indeed there was a misstatement of what the invention was. I will just take your Honours to that very quickly. At 159, which is the first of the passages referred to by their Honours Justices Wilcox and Branson, second paragraph:
A reader of the specification who knew nothing of the prior art would gain a clear impression that the quality of invention was being claimed for the whole idea - - -
GUMMOW J: That is where they got that expression from in paragraph 15 of the joint judgment of the Full Court.
MR CATTERNS: Yes, your Honour. The "knew nothing of the prior art"?
GUMMOW J: Yes.
MR CATTERNS: Yes, your Honour. It is in a different context, is it not - with respect, I am sorry to ask your Honour a question. Here it is in a different context. It is not talking about a skilled addressee, it is talking about somebody being misled because they have not been told what the state of play was.
He would not learn that the idea of a holder was old and that the provision of the tab.....was the only advance the inventors had made.
So the area of discourse, your Honour, is improvement patents. His Honour goes on to describe the evidence of the inventor himself on the next page and at 161 his Honour says:
It could hardly be made clearer.....that the invention which he and his colleagues assert consists solely in the provision of a tab or tabs -
There were amendments that put the tabs in. They had not even been disclosed in the basic application from which it claimed priority and his Honour holds, at 162, that it was not entitled to the earlier priority date. At 163 his Honour holds that it was therefore not novel, both by reason of publication and by reason of physical acts. Then, at 164, killing a specification which was already stone dead, his Honour says at the bottom of page 164:
I return now to the requirements of s.40 - - -
GUMMOW J: He had in mind what might happen on an appeal.
MR CATTERNS: With respect, that is right, your Honour. His Honour deals comprehensively with every ground. His Honour refers to section 40(1)(a) and says:
there was no inventive step taken unless it was in the provision of a tab or ear, one must consider whether an application for a patent should be granted.....where the complete specification (a) in the body of it describes the invention as being of the entirety -
whereas the claim is just the tab.
The provision of the tab or ear was at best an improvement on a known device not making the device a new thing but merely facilitating the use of an old thing in the old way for the old purpose. It seems to me impossible to regard the claims of the specification as being for a new combination of old integers; they are for the known device -
Then, your Honours, there is the passage that their Honours rely on, line 8 on page 165.
Assuming that there was an inventive step in this improvement, I am of opinion, first, that the specification as a whole offends against s.40(1) by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes -
I submit that cannot be, given other authorities and the Act, a requirement that you have to state what the inventive step is. It is referring to the misstatement of it being a whole combination versus an improvement. And, secondly, fair basis:
defining as the invention something that was much more extensive than the invention.
His Honour goes on and says on that ground it should be refused. He goes on a little further at the very bottom and holds that:
The nature of the disobedience -
to section 40 -
is such that the specification is likely to mislead, and for that reason the application ought to be refused in the exercise of those general and inherent powers -
So, your Honours, we respectfully submit that that is a different case from this dealing with that particular problem and, in any event, if it is contrary to Welch Perrin, which we submit it is not, Welch Perrin is right.
Your Honours, just briefly if I may conclude, as it were, may we refer your Honours without taking your Honours to the discussion in the CCOM v Jiejing Case (1994) 51 FCR 261, of the history of claims. We also get out of that case the proposition that conformity has never been a part of Australian law. Our friends now seem to be submitting that the invention in the body does not conform to, is a different invention from the invention in the claims. That is an interesting question which we can debate on in the context of fair basis.
Your Honours, we have provided the Court with a bundle of material, which we gave our friends this morning only, which makes good a proposition - I do not think I need to take the Court to it now, but there is a bundle of the material.
We have alerted our friends, only this morning, to what seems to be an error in their submissions about The Dean Report in our learned friend's paragraph 39 and, needless to say, your Honours, we do not criticise our friends for this, because to trace it down you have to find the earlier Knowles Report, which The Dean Report was bringing up to date. There was a committee, the Knowles Committee, which reported in 1938, and on changes to the - I see your Honours have it - Act. The war and the United Kingdom Patents Act 1949 intervened and the Dean Committee Report had another look at it and they recommended changes to a Bill that had already been drafted by the Knowles Committee and there is only one copy of this, it seems in the country, so that is why we do not criticise our friends.
If your Honours would go behind tab 3, which is the Knowles Report, at the back of it there is a Bill set out against the 1903 Act and at page 49, your Honours, there is a draft - it is page 49 of the Bill/Act. We see in the left-hand column the draft Bill and in the right-hand column the 1903 Act. Your Honours can see that clause 39 is:
A provisional specification shall fairly describe the nature of the invention.
Whereas clause 40 says:
A complete specification shall fully describe and ascertain -
which was exactly what was in the old Act, and the passage in The Dean Report, that our friends refer to, is behind the next tab. At page 11 they are referring to the old Bill and at paragraph 48, which is the passage our friends refer to, it says:
Clause 39 provides that a specification shall describe the invention and not merely, as at present, the nature of the invention -
that is then their new draft of clause 39 -
The reason why we recommend this change is that if an applicant is in possession of an invention he should be able to describe it and not its nature.
So we agree that the description of the nature is something smaller than, but it is subsumed within now the idea of describing the invention, and your Honours can see at the back there is their own Bill at page 67 of which there is their draft of what became our section 39 and 40 of the 1952 Act and it is the provisional that their Honours were talking about when they talked about the nature of the invention. There is no separate requirement, and never has been in Australia, to describe the nature of the invention in a complete specification. It is an historical hangover from the 1852 Act, when a provisional had to describe and ascertain the nature of the invention, because you got protection based on that.
So, your Honours, we respectfully submit that the majority was wrong in adopting what we have called for short an essential features approach. It has been criticised in the context of fair basis in the CCOM Case and we respectfully submit that it applied a fortiori to the area of sufficiency where there is a different task being undertaken in describing the invention.
Your Honours, we have put a bit of international material in our submissions and the statutes of different countries are worded differently and so we do not want to put it too high but we submit that it shows, including the Patent Co-Operation Treaty which we quote, Articles 5 and 6, which is part of our legislation because it is scheduled 2 to the Patents Regulations. The requirement of sufficiency is to tell you how to perform the invention and the requirement of claims is to define an invention marking out the monopoly.
So, your Honours, we submit that as the Court paraphrased the paragraph in the Grain Pool Case recently, section 40(2)(a) is just a requirement that the patentee sufficiently specify the working of the invention. It is the job of the claims to state what the essential features are, that is to define the invention. May it please the Court.
GLEESON CJ: Thank you. Yes, Dr Bennett.
MRS BENNETT: Your Honours, my learned friend has introduced a number of factors into his argument which do not bear upon the decision before the Court and which did not influence or bear upon the correctness of the decision of the majority.
In order to go back to the beginning - before I do that let me just say fairly and squarely that we say that there is nothing that the Full Court did that is inconsistent in any way with previous decisions of the court with respect to fair basis.
If I can take your Honours back to section 40 of the Patents Act which, of course, is really what we are talking about here, and the different requirements. It goes without saying that what we are talking about here when anyone talks about a patent is a way in which a person gets a monopoly for a particular product, and the legislation has - - -
GUMMOW J: It is not necessarily for a product.
MRS BENNETT: Well, for an invention.
GUMMOW J: It could be a process.
MRS BENNETT: Or an invention which may be a product of a process, yes, of course, I am sorry, your Honour. I was looking at it in the context of this particular patent. So, what the legislation has done has been to impose certain conditions and requirements upon a patentee. As we have set out in our submissions, basic to that requirement is that the patentee, as a consideration for the grant of a monopoly, must effectively give the invention to the public. Then the patentee may choose to define a monopoly which may be totally co-extensive with the invention or may be less than that, but it must be for the invention. So, if we look to section 40, we see in section 40(2) what a complete specification must do. In section 40(2)(a) we know that the:
complete specification must:
(a) describe the invention fully -
It does not say "give sufficient working", it says:
describe the invention fully, including the best method known to the applicant of performing the invention -
When it comes to the claims, which serve a totally different function, we know that:
(b) where it relates to an application for a standard patent -
the complete specification must -
end with a claim or claims defining the invention -
Now, what we put in our written submissions - and it is quite apparent from the use of the different words and it conforms with what is in the dictionaries - description is not the same as definition and, indeed, that was - - -
GUMMOW J: Do you say or not say that one can look at the claims as part of the description?
MRS BENNETT: We say, and the Full Court said, that you cannot. But, of course, the Full Court went on to say even you do it does not help. Why do we say that, your Honours? For this reason - - -
GUMMOW J: Is that not inconsistent with AMP?
MRS BENNETT: No, your Honour, it is not for this reason: because in context we know that there has to be a description in the complete specification. The claims serve a different purpose and that has been from time immemorial. It is the function of the body of a specification to describe the invention fully. What the cases have said is, and Welch Perrin and the United Shoe Case both did it, in the body of the specification in each of those cases the patentee incorporated the claims in the body and said, "I wish to complete my description by reference to the claims". If that is not done, one cannot use the claims to complete the description because there is a difference, and it was said quite clearly in the AMP v Utilux Case that my learned friend took your Honours to. It is a one sentence matter so your Honours do not need to get it, but at page 128 in the second column, at point E, his Honour said quite clearly:
The description of the invention is not the definition of it.
Because the idea is that it is a function of the body, and it comes from the Blanco White reference your Honour Justice Gummow referred to, and many cases, and some of which I will take your Honours to, to describe it fully and to tell the public how to work the invention after the patent has expired.
GUMMOW J: I think what is put against you is that the complete specification is the one document which serves various functions.
MRS BENNETT: I understand that, your Honour. But we say that when one looks at all the cases that have dealt with it, it is quite clear - and there has been no case to the contrary - that one looks at the body of the specification for the description and the claims to limit the monopoly. As we say, description is not the same as definition, both by reason of basic English language and also, if we need authority for it, the decision in AMP v Utilux. But what their Honours did in the Full Court, of course, was look at that but then go further.
GUMMOW J: It is not quite as simple as that, is it, really, because are there not cases that say even with the claims you can refer to the body for a dictionary - - -
MRS BENNETT: In certain circumstances and that is where there is an ambiguity of a particular expression, not as to the invention.
GUMMOW J: Yes. All I am just saying is I do not think there is always a firewall between the two ideas.
MRS BENNETT: No. Well, I was going to go on to that and say when one can one can use the two together in certain defined circumstances. One is where, for example, the claims or the body refer to each other. The second is there is authority for the proposition that where there is an ambiguity of expression one can go to the other.
There is a decision of the Full Court in Décor v Dart which has been applied many, many times where the court sets out a series of distinct propositions, which are very apposite in this case. One is that you must look at the claims absolutely alone and it is only where there is an ambiguity in the terminology of the claims that you are permitted to go back into the body of the specification to clarify that ambiguity.
GUMMOW J: What is put here is the other way around.
MRS BENNETT: Yes, I am about to come to that. We say that that recognises the distinction between the difference of the body in the claims and the need to construe them separately and we referred in our written submissions to a passage in Blanco-White where the author says that the same concept of construction applies to the body, vis-a-vis the claims so you can only use the body to construe a doubtful expression in the claims or the other way around.
Indeed, that is how Justice Tamberlin came to use the claims because he found an ambiguity in the body and I know my friend does not rely upon that and we say that that is inappropriate in the circumstances in any event. But it is only where there is an ambiguity of expression that one can look at the whole of the document to assist in resolving that ambiguous expression, or it might be a term of art that has been more fully described but it does not mean that when one is looking to see what the invention is or what the description of the invention is or how to tell a person of ordinary skill how to work the invention, because of course, in order to tell someone how to work the invention the person has to understand what it is that they are working and the public has to be put in possession of that invention.
That is inherent in all of the cases that our learned friends have gone to and the cases we have referred to in our written submissions. I should just add there is another case that we have handed up. I do not know if your Honours got it. Sorry, it was not in our bundle, our original list of authorities but we have a bundle of material that we also sought to hand up which just contains some of the dictionary definitions, one matter that was left out of our additional material and a further case upon which we rely.
That further case is the decision of Evans and Taunton v Hoskins and Sewell, (1907) 24 RPC 517, where at page 522 Lord Morton said at about line 44 - - -
GUMMOW J: It cannot be Lord Morton. Lord Justice Vaughan Williams.
MRS BENNETT: I am sorry, I was thinking of the United Shoe Case which was Lord Morton, your Honour.
GUMMOW J: Yes, I know.
MRS BENNETT:
If the Claim clears up something which in the other part of the text might be doubtful, it seems to me that the Court may, and is bound, in a Specification, to take into consideration in construing it everything you find in the Specification just as much as you would in any other document. It is quite true that you will not allow the Claim to supplement the description in the Specification so as to introduce features which are not there, but when you are asked to put a particular construction upon particular words in the Specification, which are capable of two meanings, I think you may assist your conclusion by looking to see how those words, as to which it is said the meaning is doubtful, are embodied in the Claim itself.
So otherwise, one cannot use it to complete the description, we say. In our respectful submission, there is no authority to the contrary. Of course, in Welch Perrin and United Shoe where they did look at the invention across the specification in the claims, that was because the specification in each case specifically incorporated the claims, which of course is not the case here.
However, of course - and I will be taking your Honours to the Full Court decision - the Full Court went beyond that though and said, "Even if we go to the claims, it doesn't assist in clarifying what the invention is or how to perform it". My learned friend's submission was that it is the claims that complete the description of the invention. If that is so, we have the situation that the invention itself is the improvement or is a product nappy which has fluid permeable flaps. So, if the invention itself is fluid permeable flaps, then, their Honours say, when you go to see how to make it in the directions that are given to you, you are specifically told that you can make it with fluid impermeable flaps, either vapour permeable and not fluid permeable or, indeed, it is only an option in any event.
So, one has a situation where, even if one looks for the claim to complete the requirement fully to describe the invention, you have an invention that you are not told how to make or you are told to make something opposite to that.
GUMMOW J: I know, but the cases seem to say that the claims can be narrower than the body.
MRS BENNETT: Yes, your Honour.
GUMMOW J: If that is right, will you not always have this dysfunction? I think that is what is put against you, anyway.
MRS BENNETT: This is coming up with a lot of what my friend has put on the fair basis point and we say everything is consistent with that. There is a difference, with respect, between a narrowing of the invention and the invention itself.
McHUGH J: Why is it that the claim is narrow, because of the prior art, or - - -
MRS BENNETT: One can add integers to the claim which narrows it to defeat the prior art but in all the cases it is quite clear that that can be done with additional features. The passage from CCOM, for example, that my learned friend relies upon and puts into his submissions does not stop halfway through the sentence. It says that when you are looking at fair basis you do not isolate essential integers with respect to all of the integers of the claim and then compare them because you can have additional integers for a dependent claim that you have added but what you must have, though, is that all the claims must claim the invention itself.
In the recent decision that my learned friend put on his list of authorities of ICI v Lubrizol the Full Court explain it in terms of first you must peg out the gold mine and then, of course, you can have additional features, for example, in the case of a nappy you might have said it is a blue nappy or in the case of one of the dependent claims they say the flaps have to be rectangular, but that is not the core of the invention. You can add something to the core of the invention and that is where the fair basis cases come in because what happens in CCOM and Rehm, as I read them, is that in each case someone tried to say, "Well, hang on a second, there were other integers in the body, like in the preferred embodiment, and you have got to have those in your claims" and that was in Rehm and your Honour Justice Gummow said, "No, you do not do it that way"
In other cases people said, "You have got to find all of the dependent claims - dependent integers, additional integers in the claims in the body" and the thing was there that what you are doing there is looking to see whether those additional ones were described as essential in the body. No, you do not do that. You have got to see if they are really and reasonably disclosed but that does not go to say that you can change the nature of the invention.
MRS BENNETT: Now, the finding of the Full Court - and it is consistent with one aspect of my learned friend's argument and inconsistent with what he put to your Honours now - the Full Court held, and it is not challenged on appeal, that the core of the invention was fluid permeable flaps in the disposable nappy. That was the core of the invention. That has not been challenged. In fact it is consistent with my friend's argument, I suppose, that the invention that he says has been described as the one in the claims, which has fluid permeable flaps. Part of his submissions this morning, especially in looking at the aspect he dealt with in fair basis, was trying to change the nature of the invention and saying, no, it was just the flaps themselves, and then he says, I have narrowed it into fluid permeable. But that is not the finding of the Full Court and that is not a subject of appeal.
GLEESON CJ: Can you let us know when you come to a convenient time. That will suit?
MRS BENNETT: Yes, your Honour.
GLEESON CJ: All right. We will adjourn until 2.15 pm.
AT 12.48 PM LUNCHEON ADJOURNMENT
UPON RESUMING AT 2.19 PM:
GLEESON CJ: Yes, Dr Bennett.
MRS BENNETT: Your Honours, before lunch I was just going to section 40 and just a couple of other matters that I would seek to point out with respect to that. It goes without saying that the obligation to comply with section 40(2)(a), which is the obligation to "describe the invention fully" is very different from the obligation and separate to, and additional to, the obligation under section 40(3), which provides that:
The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
So where we are with it is, and what I put to your Honours before lunch was, that one cannot import glosses between the claims and specification. One reads them in - - -
McHUGH J: But is that not what you are doing, that you are putting a gloss on the section by insisting that it is the body of the specification which must describe the invention and the claims can only be used where there is some ambiguity?
MRS BENNETT: No, that is not what I was putting to you. If that - - -
McHUGH J: Is that not the consequence of it?
MRS BENNETT: No, it is not the consequence, with respect, and that is not what I was intending to put and if I did, then let me try again. Section 40(2) says that:
A complete specification must:
(a) describe the invention fully -
and complete specification, if one follows through the definition in the schedule, complete specification is defined in terms of specification and specification is defined in terms of the description, claims and drawings contained in the application.
GLEESON CJ: What is the consequence if it describes something in addition to the invention?
MRS BENNETT: When you say "describes something in addition to the invention", there is the invention on one - - -
GLEESON CJ: Yes, when it says, this is the way to make the invention and we will also tell you how to make something in respect of which we do not claim a monopoly.
MRS BENNETT: Yes, yes, one can do that, but one still has to characterise what the invention is. For example, it is not unusual for the body of a specification to describe a process and a product and for the claims only to claim the product and not to claim the process.
GLEESON CJ: But is it not always - or is it not commonly the situation, where the claims are narrower than the description of the invention, that what you are doing is describing, as well as the invention, something more.
MRS BENNETT: Often what the claims do is add things to the invention, but they must deal with the invention itself. For example - and I will take your Honours to the patent in this case - as one goes through the body of the specification, one has to ascertain from the specification what the invention is.
GLEESON CJ: Suppose they had spelled it out in detail, Dr Bennett? Suppose they had actually said, "Diapers like this can be made with pervious or impervious flaps. Proctor and Gamble, in fact, made one with impervious flaps in the past and, consequently, we are limiting our claim to ones with pervious flaps"?
MRS BENNETT: Yes, but in this case the core of the invention was the provision of the fluid permeable flaps. One goes first to see what is the invention when one looks to the whole of the specification, and when one looks to it - - -
GUMMOW J: You are confusing invention and inventive step.
MRS BENNETT: No, I am not, with respect, I am not.
GUMMOW J: All right.
MRS BENNETT: Invention is the thing.
GUMMOW J: Invention is just a manner of new manufacture. That is what the Act says.
MRS BENNETT: Yes. An invention is, in this case, a product which is a combination of particular integers which together go to make up the combination that is claimed as the invention and it must have each of those parts in it and that is what is provided for.
GUMMOW J: It may not be a patentable invention unless it has certain other characteristics. The Act distinguishes between inventions and patentable inventions.
MRS BENNETT: Well, patentable invention has to comply with other matters.
GUMMOW J: It does. It says so, section 18.
MRS BENNETT: Section 18, yes, and that gets to the question of whether or not - in Mirabella this Court determined that section 18 means that there is a threshold question of whether or not a patentable invention is first an invention and then it has to satisfy a number of other contingencies. It has to be - your Honour would not know what they are - a "manner of manufacture". It has to be "novel" and involve "an inventive step" to be patentable.
When you look to see what the thing is, that there is in the invention in the present case, the thing that is described - one has fully to describe the invention in the complete specification. What the Full Court said here was two things. First, it said that the core of the invention, which was the case put by the respondent at all times, and when you look at the specification as a whole, it is apparent, if my friend wants to draw on it what the claims say the invention is, is a disposable nappy with fluid permeable flaps.
When one looks to see what the skilled reader is told to do to make the invention, there is total confusion because what we would be taking your Honours through is the whole - the whole direction of the patent itself is towards fluid impermeable flaps.
Then in the last paragraph in respect of the second embodiment they say you may have fluid permeable flaps and then when you go to the claims it tells you that the invention is a patent with fluid permeable flaps. So there is total confusion for the poor person trying to make the invention because, of course, in order to take steps to make it, you have to know what to make.
It is all very well for my friend to say that the evidence was that the skilled reader would know how to make a nappy but the invention is not, although it would seem to us from our learned friend's submissions in reply, a suggestion that they invented the disposable nappy. The invention is not the disposable nappy. It is an improvement, an alleged improvement to a disposable nappy, which improvement is the provision of fluid permeable flaps.
HAYNE J: Well, in terms of section 40(2), in this case, what are the pages of the appeal book to which regard may be had in determining the question presented by section 40(2)(a)?
MRS BENNETT: Your Honour, I take it, is not referring to the decision of the Full Court.
HAYNE J: No, no, of the patent. Which pages of the appeal book?
MRS BENNETT: The patent, as it appears at page 184.
HAYNE J: Yes, that is the beginning. My question was: what pages? Until when? Can you go through to 195 or not?
MRS BENNETT: Yes, your Honour.
HAYNE J: Thus, within those pages one must find, must one, a description that can be said to be describing the invention fully?
MRS BENNETT: There are two ways of looking at it. Certainly, the first part of it, and that is up to page 190, has to tell the person of skill how to perform the invention. In doing so, he has to explain what the invention is in order for the person to be able to perform it.
HAYNE J: Do you, therefore - I understand that to be a different answer, that is, I understand your answer now to be that in addressing the question presented by section 40(2)(a) you may look only to 184 to 190.
MRS BENNETT: Not necessarily, your Honour. There is a question of "necessary" and "sufficient". In order to see, at the very least, if a person can perform the invention, which imports into it a requirement that you have to know what the invention is, you look up to page 190. In order to determine whether there has been a full description of the invention, one is entitled to look at the whole of the specification. But then, one is left in the position where the skilled reader cannot reasonably understand what the invention is, because the two tell you different things.
HAYNE J: Does it therefore follow that you are reading a complete specification, where it appears in the introductory words of section 40(2) as having differential content, according to the paragraphs, or parts of paragraphs, in section 40?
MRS BENNETT: Section 40(2)(a) talks about the:
complete specification must:
(a) describe the invention fully -
So one looks to the complete specification to see if it is described fully. That concept, which has always been in patent law, well before, what I would call, the Johnny-come-lately affair basis in 1952, that does not delegate from the fact that the two parts of a specification, which together must describe the invention, serve different purposes. The body of the specification, which one looks at to construe it separately, subject to ambiguity, must tell the person of ordinary skill how to work the invention or perform the invention and the monopoly that is claimed must be defined in the claims. One can still look at the whole of it to determine what the invention is and here we have a situation where one does that, one is left with confusion, and that is what the Full Court said. I think that makes that part of it clear.
What we would seek to do now, your Honours, is just do two things: first, just to put some of that into context, can I take your Honours back to Welch Perrin v Worrel [1961] HCA 91; (1961) 106 CLR 588 and take your Honours to page 609. In each case it is a question of looking at the patent specification and seeing what it says. That is what they do in each case. In this case there was an attempt to bring the claims into the body, and that was one aspect of what their Honours were considering, but there are other aspects that we take your Honours to now. If your Honours go about half-way down page 609:
Most of the argument before us centred upon the construction of the specification and, as in every patent case, it is necessary to determine from it what exactly is the invention it describes and for which a monopoly is claimed, before proceeding to consider objections to the validity of particular claims.
And there there was a question that in that case that it was "muddled and ambiguous" and as a question of fact their Honours dealt with that later. They confirm, at the bottom of page 609, that there is no difference between the requirements of section 40 of the 1952 Act and earlier requirements. If your Honours go over the page to page 610 - I am sorry, starting at the bottom of page 609:
The main requirements are that the specification shall fully describe the invention and the manner in which it is to be performed and shall end with a claim or claims. The function of the claims of a specification has long been well established in patent law; and the appellant's objection based on non-compliance with s. 40 may be considered as if the relevant parts of s. 40 have the same effect as the corresponding requirements of the former law.
If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole - - -
GUMMOW J: "As a whole"?
MRS BENNETT: Yes:
that, of course, is an end of the matter.
We will be showing your Honours that when one goes to the specification as a whole here, one cannot ascertain what the invention is. They go on and say:
But this objection is not established by reading the specification in the abstract.....It is, however, fitting that we remind ourselves of the criterion to be applied when it is said that a specification is ambiguous -
and they go on to deal with that. Their Honours then refer to the fact that they are construing:
a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood.
Then they go on again to say, after the reference to Kauzal v Lee:
The specification must be read as a whole. But it is a whole made up of several parts, and those parts have different functions. Courts have often insisted that it is not legitimate to narrow or expand the boundaries of monopoly -
et cetera, to go into the claims and, as I put to your Honours before lunch, the other way round.
GUMMOW J: Yes, I know, but who says "the other way round"? Where has that been said?
MRS BENNETT: I think there was a reference in our written submissions to Blanco White where the author says that the same principles of construction work in reverse. I will turn that up for your Honour. Then if your Honours could go to page 612 - - -
McHUGH J: Yes, it is at page 43 of your submissions.
MRS BENNETT: Thank you, your Honour. There does not seem to be much discussion of it, your Honours, because it is not a question that seems to have been considered one way or the other very often. Usually, it is the question of - - -
GUMMOW J: I think because the practice has been to assume the contrary. That is all I can say.
MRS BENNETT: With respect, your Honour, the logic that applies to the separation of the claims in the body applies equally to the other way round when one looks at the fact that one is talking about different functions. At page 612, at about point 7 of the page, in the paragraph commencing, "At this point in a modern specification", there is a reference to the consistory clause. Of course, here there is no consistory clause. Their Honours refer to the United Shoe Corporation Application Case, which we have dealt with in our written submissions, and then go on to say:
The present Australian Act -
which is the 1952 Act -
expressly requires the claim or claims to define the invention: s 40. In a patent for a combination, such as this is, the most important function of the body of the specification is to show what are the mechanical means which, operating together, produce the result claimed -
and in this case, if one goes by analogy, we say that what the specification has to show is what are the parts of the nappy - what it has to show is what are the parts of the nappy which operate together to produce the result claimed, which is the result, basically, of containing diuretic bowel movements, which is a fairly unattractive proposition, but that is what the patent is directed to. So it is important that the body shows you what they are and that is where this patent specification falls afoul of that concept.
McHUGH J: That is the case with a well-drawn specification, that the body would show you what the invention was, and the claims would show you was the monopoly. But why cannot you look at the claims as well as the body to see what the invention is? I might ask rhetorically, notwithstanding the case law, why cannot you look at the body of the specification to see what the claims are, if it throws any real light on it?
MRS BENNETT: Without dealing with the second aspects, at the moment can I deal with the first aspect? If one here goes to the claims one sees that the invention is the nappy with fluid pervious flaps. Then, when one looks to see what the poor old skilled reader is told to do to make the nappy - - -
GUMMOW J: The invention is really a combination, is it not?
MRS BENNETT: It is a combination which consists of the various integers or aspects including fluid pervious flaps. That is one of the parts of the invention that makes this allegedly a new combination.
GUMMOW J: Exactly. Now in Rose Holdings [1957] HCA 48; 98 CLR 444 at 449 Sir Dudley Williams said that "a full description" distinguished between new and old integers.
MRS BENNETT: Yes, your Honour.
GUMMOW J: It is the new integer that gives it the distinctive character as a combination, is it not?
MRS BENNETT: Yes, but, your Honour, with respect, that does not make any difference to the requirement to describe the invention. One does not need to say - - -
GUMMOW J: Well, we are still fighting about this word "invention" and I will be quiet soon.
MRS BENNETT: Let me put it in the words of the combination. That is probably easier.
GUMMOW J: I thought you would agree with me that the invention was a combination.
MRS BENNETT: Yes.
GUMMOW J: Comprising a number of integers.
MRS BENNETT: So let us talk about it as a combination.
GUMMOW J: They are fully disclosed?
MRS BENNETT: Not in - if one looks - - -
GUMMOW J: They were not fully disclosed in the Brush Case because you were not told how to get the bristles into the holder.
MRS BENNETT: When the skilled reader is told how to make that particular combination, the skilled reader is specifically told either that he or she should use fluid impermeable flaps or that it does not matter what you use, so that what the skilled reader is told to make is different to the nappy that is said to be the core of the invention. So if the skilled reader makes what he or she is directed to make in the body of the specification, that person will end up with a different nappy to the one that is said to be the invention. The invention has not been given to the public.
Perhaps the best way to deal with that is to take your Honours to the patent itself. Your Honours, we handed up also some convenient dictionary definitions that deal with some of the words that are set out in a body of the specification as well. If your Honours go to page 186 which is the patent specification that is being construed. Your Honours will see under the "Abstract of the disclosure" talks about:
A unitary disposable diaper with elasticized legs is provided having a fluid pervious liner a fluid impervious backing with absorbent material positioned there between. A faecal containment flap -
and we emphasise the word "containment" in that regard and your Honours will see from the dictionary definition that the concept of "contain" is:
to have within itself; hold within fixed limits -
or -
to form the boundary of -
So you have the concept of a containment flap. Then if one goes to page 187 it relates to a disposable diaper with elasticised leg openings and then under the "Background of the Invention" it points out what had already been well known in the background:
Unitary disposable diapers have recently become the primary type of diaper used in this country. Disposable diapers with elasticized leg openings to provide a better fit and improved containment have recently become a significant part of the disposable diaper market. These elasticized portions are designed to fit around the legs of the baby to aid in the prevention of side leakage and they have been a substantial improvement over the conventional non-elastic disposable diaper. The elastic leg diapers however, are not completely successful in stopping explosive liquefied bowel movements which often occur.
So, so far we are talking about a field of endeavour where what they are looking to do is to improve containment.
Attempts have been made to provide diapers with some additional reinforcing containment means.
So far, one is looking at a barrier. If one remembers that the backing is impervious, one is looking at a second - - -
GLEESON CJ: You referred us to the dictionary definition of "contained", but not to the dictionary definition of "containment".
MRS BENNETT: No, your Honour:
the act or policy of preventing the expansion beyond certain limits -
and that is -
of a hostile power.
GLEESON CJ: "Of a hostile power". No, that is a figure of speech that they are using here.
MRS BENNETT: I suppose a hostile power here would be the diarrhetic bowel movements.
GLEESON CJ: You do not necessarily keep them within a barrier. You can have relative containment.
MRS BENNETT: One can say that as a word, yes, one can have relative containment, but when you look at the whole of this, what it is talking about is stopping, basically stopping things, not just slowing them down, but providing a second means of stopping them leaking out.
HAYNE J: Just while we are at the dictionaries, which we seem to have different dictionaries, which dictionaries are these drawn from?
MRS BENNETT: I am sorry, your Honour, these are all from the Macquarie Dictionary.
HAYNE J: The typeface looks different.
MRS BENNETT: Sorry, "contain" is from Macquarie.
CALLINAN J: Do we have any - - -
MRS BENNETT: Sorry, the others were referred to - "define" was in the written submissions, we just handed them up because we did not put them in initially. "Define" and "describe" were referred to in our written submissions and our additional material. The additional ones that we are handing up now in relation to different words are "contain", "permeable" and "pervious", and they all come from the Macquarie Dictionary.
CALLINAN J: Do we have any from a prescriptive dictionary, as opposed to a descriptive dictionary like Macquarie?
MRS BENNETT: These are the only ones we have brought with us, your Honour.
CALLINAN J: I would like to see what the Oxford said myself.
MRS BENNETT: I apologise for the fact that we have not brought those with us.
CALLINAN J: I will look it up.
MRS BENNETT: So, going on at page 187, it refers to another US patent which uses "plastic strips to form containment means" and then describes the fact that the way that they are used, the "configuration" of those plastic strips does not deal with the problem. Then it goes at page 188 to the summary of the invention:
According to this invention an elastic legged unitary disposable diaper is provided which has an elasticized flap extending inwardly from each side of the diaper.....This flap has elasticization means near the inner most portion so that when the diaper is worn, the flap tends to form a second inwardly facing barrier particularly adapted to contain diarrhetic bowel movements.
So it is a second barrier, that is a second barrier to the backing, and "barrier" in the Macquarie Dictionary is defined in terms of:
anything built or serving to bar passage as a stockade or fortress -
and in that context, your Honours, we would submit that "contain" there has the same sort of - - -
GUMMOW J: This might found an inutility argument. I am not saying it does, but this is the sort of area.
MRS BENNETT: Well, it may well, but that does not mean that, in addition to it, that gets into all sorts of complexities about permeability and matters such as that, your Honour, that I can go into to some extent if your Honours wish me to. We then go through the detailed description of the invention and the first embodiment is described by reference to Figures 1 and 2. But your Honours will see on page 188 that while there is reference at line 35 to "a fluid pervious diaper liner", when one goes to line 40, you see:
The sides of the diaper 16 include the ear projections13 and the centrally positioned elasticized means 17 which is designed to form a barrier around the leg of the infant when the diaper is worn -
and then at line 49:
According to this invention, a flap 14 which is sealed along seal line 20, is provided with elastic means -
Then it goes on at page 189 to describe the elastic means, and there is no mention there of any fluid pervious ability or any fluid pervious requirement of the flap. So all of the direction so far, we say, the skilled reader is told to have a second barrier, that is a flap consisting of impervious material.
Then at page 189 we get to the second embodiment depicted in figures 3 and 4 and, again, it talks about "isolating faecal material" at the bottom of the page, and then over at page 190, out of the blue, we have at line 11 that:
The flap material is preferably soft, conformable and vapor and/or fluid permeable.
So the skilled reader at this stage is left - - -
GLEESON CJ: We have one more thing, do we not? Does not that additional sentence refer to something that is permeable?
MRS BENNETT: Yes it does:
The flap material is preferable soft, conformable and vapor and/or fluid permeable.
GLEESON CJ: And then, the next sentence.
MRS BENNETT: I am sorry, your Honour. I did not appreciate what your Honour was referring to. Yes, it then says "a suitable material" may be made of a certain weight.
GLEESON CJ: And that is permeable, is it not?
MRS BENNETT: Yes, your Honour.
GUMMOW J: The diaper liner is said to be permeable.
MRS BENNETT: The diaper liner is permeable.
GUMMOW J: Yes.
MRS BENNETT: But this is the flap. The liner is the part, of course, that sits around the baby's bottom to take the bulk of the material through it and away from the baby, it is the internal part, whereas the flap is also part - it comes around to try and stop it moving out, you know, the liner is the thick cushion part.
GLEESON CJ: But by way of elaborating what appears in the first sentence of that paragraph, they go on to give an example of a suitable material, which happens to be a permeable material.
MRS BENNETT: Yes, they do, and while there was some discussion before in Justice Burchett's judgment about what the "preferably" refers to, as the Full Court points out, the options are still a number of different options with regard to "vapor and/or fluid permeable" and I will come to their Honours reasons for a moment.
GUMMOW J: Well, Gortex would be an example of something that was vapour, but not fluid permeable.
MRS BENNETT: Yes, I was trying to think of an example of a material that I knew, your Honour. Thank you very much for that. That actually is a good example for those skiers who deal with it at the very least.
So when the skilled reader who wishes to work the invention after the patent has expired, which means after the monopoly is no longer valid, looks to the body of a specification for a description of what to make, there is a degree of confusion. There is a direction towards fluid impermeability and then, so far as the second embodiment is concerned, they are told that it can be fluid permeable. Now, either that relates to the whole of the invention or only the second embodiment but, in any event, there is some confusion. Certainly there is no requirement that the invention have a fluid permeable flap, because it is all optional, and if it relates to the second embodiment only, as was determined by Justice Tamberlin, then, quite clearly - - -
GUMMOW J: Is there any evidence that any skilled addressee would be confused?
MRS BENNETT: No, there was no such evidence, to the best of my recollection. When I deal with the question of evidence, I can give - - -
McHUGH J: Was there not some evidence from a Dr Ernst in an affidavit, or was that never read?
MRS BENNETT: Yes, it was not read - there are reasons, and I can refer your Honours to the transcript. There was a discussion between counsel and his Honour Justice Burchett as to the use of any evidence that would assist his Honour or not assist his Honour in that case and there was a discussion to the effect that his Honour was quite capable of construing the patent specification for himself and, in those circumstances, he did not need or require skilled evidence and, therefore, evidence was not read on that topic. His Honour took the view, I think, in accordance probably with what was said by - - -
GUMMOW J: Well, it may be that reflects the way this point emerged in the appeal, but it may have been at the trial, if it had been run up-front at trial, you would have said, "I say this confuses a skilled addressee." Such a person who answered that description could be produced, could they not?
MRS BENNETT: The question of evidence was raised before the Full Court and the same matter was referred to, that there was just simply no evidence below on it. What we are talking about is the construction of the patent itself. But, no, to answer the question simply, there was no direct evidence as to whether the skilled reader would be confused. There was a reference - and I will come to it - - -
GUMMOW J: But a skilled reader is not a person on the Clapham omnibus. I mean, the judges may sit on a Clapham omnibus, but they are not skilled readers.
MRS BENNETT: No, their Honours were construing - well, the question is whether or not it would teach a person how to perform the invention. So that their Honours were construing the whole of the specification to see if it complied with the requirement of full description.
GUMMOW J: I thought you just said that this would confuse a skilled reader, and that that was the vice of it.
MRS BENNETT: Yes, sorry. Well, properly construed, the specification is confusing - perhaps I should have put it that way - as to what to do, for anyone to read it as to what to do.
GUMMOW J: But it is not just anyone, is the problem.
MRS BENNETT: No. Well, Justice Burchett, in the passage my learned friend took you to, did say in the context of fair basis - - -
GUMMOW J: And this is a fairly simple one; it could be a chemistry patent, as you know very well.
MRS BENNETT: Yes, it is a simple patent, but at the same time when you are saying that you have made a particular improvement in the combination over the combinations of the prior art, then it is incumbent upon the patentee to make sure that it spells out on the face of the patent for the public how to work the invention.
GUMMOW J: No, not for the public.
MRS BENNETT: For a person who wishes to work the invention.
GUMMOW J: Exactly.
MRS BENNETT: While Justice Burchett said in the context of fair basis in a finding of fact that the Full Court did not accept that a person of ordinary skill would unhesitantly choose fluid pervious flaps, there was also evidence that I can take your Honours to that pervious material would not achieve the object of stopping the fluid. I can take your Honours to that now, because there was some evidence as to - - -
GLEESON CJ: Stopping completely. But that was the whole idea, was it not, that you did not stop it completely?
MRS BENNETT: Would not achieve the purposes of the invention.
GLEESON CJ: What do you make of the summary of the invention that appears at the top of page 188?
MRS BENNETT: Is your Honour referring to the abstract of the disclosure?
GLEESON CJ: Under the heading, "Summary of the Invention".
MRS BENNETT: Page 188, sorry, your Honour. We would say that the summary of the invention directs the reader to use impermeable flaps because it talks about the flaps being a "second inwardly facing barrier particularly adapted to contain diarrhetic bowel movements". There is certainly no direction there to use fluid permeable - the quite clear instruction there is to use impermeable, a second barrier.
GLEESON CJ: Yes, but that argument seems to turn upon your view of containment, which you explained already, "contain" and "containment" as not permitting relativity or matters of degree.
MRS BENNETT: Not only containment, your Honour, with respect, but also barrier: "a second inwardly facing barrier", bearing in mind that we know that the first barrier is the fluid impermeable backing sheet, which does not do the job itself, even elasticised. So this is a "second inwardly facing barrier" to stop the bowel movements from going outside the nappy.
GUMMOW J: Well, it would have to be more than elasticised, would it not? It would have to be a tourniquet.
MRS BENNETT: If it is impermeable and elasticised, then it does a better job. Basically, the idea is to do everything possible to stop it leaking out. It may be that nothing finally achieves ultimately, containing every aspect of it, but what they are saying here is - - -
GUMMOW J: But does that not suggest that "contained" has the meaning the Chief Justice is putting to you?
MRS BENNETT: Well, even if it only means the maximum amount to prevent the egress, then still it teaches or would be construed to mean "impermeable" in the context because if you are trying to stop it, you would be trying to stop it with something that does not allow it through.
GLEESON CJ: They were not trying to design a plug.
MRS BENNETT: They were trying to stop as much as possible from going out and if you are doing that, with respect, your Honour, you do not use tissue paper. You use a second barrier. The first barrier is an impermeable backing sheet. The second barrier is a second row of that which would also be adapted to try and stop it.
GLEESON CJ: I may have misunderstood what I read about the evidence but I had an impression that it was being suggested that part of the skill, if I can use that word - one of the reasons this was a good idea was that it provided a substantial degree of containment but it also permitted a desirable measure of flexibility.
MRS BENNETT: Your Honour, there was - - -
HAYNE J: And the fluid pervious device worked. It contains. So, why does this summary point you inexorably, as I understand your argument were to have it, to an impermeable? We know that the other one works.
MRS BENNETT: We also know that the current product being sold is a fluid impervious flap. There are questions then arise about a number of aspects but there is evidence as to the fact that the current product being sold by the appellant is, in fact, an impervious flap.
GLEESON CJ: Was there evidence about what was the difference between the Proctor and Gamble product and this one?
MRS BENNETT: The Proctor and Gamble product had an impermeable flap.
GLEESON CJ: Apart from that was there a difference?
MRS BENNETT: My recollection is not, but I was not in the trial so part of those aspects I am not as familiar with as I should be, your Honour. My understanding is that the Proctor and Gamble product was the same except it had fluid impermeable flaps and now the current product has fluid impermeable flaps. I think there was evidence as to the fact that there had been litigation that had ultimately concluded or settled between the parties, between Proctor and Gamble and Kimberly-Clark and that after that Kimberly-Clark sold impermeable flaps. It is referred to broadly at pages 65 and 84 of the appeal book. There is evidence in relation to that.
If I can perhaps take your Honours, seeing we are talking about what a person would see as achieving an invention, can I take your Honours very shortly to some of the evidence in that regard. Bearing in mind - Mr Butler, who was the appellant's witness - if I can take your Honours first to page 44 of the appeal book. It is a side issue but while we are at the evidence let me take you to that. Now, at line 10 Mr Butler is asked to agree with the fact that the:
core of the invention of the Enloe Patent is to add a second barrier but a liquid pervious barrier on the inside of each of these elastic legs -
and so that is another basis other than the appellant's case for their Honours finding, the majority's finding, that the core of the invention was still of pervious flaps.
If I can now take your Honours to page 68 at line 4. Do your Honours have that:
And the idea - we will come to I think something in the document about that - the idea of that was to ensure as much as possible that there would be no leakage of any liquid from the centre of the crotch area out beyond the flap through the adhesive line?---I wouldn't say that there would be no leakage. It is to improve the barrier.
For the purpose of preventing leakage?---That's right.
So the two related steps were to make the flap material as liquid impermeable as was practical firstly?---To a known level.
With the purpose of preventing leakage through the flaps, of liquid?---Yes.
So the idea was to stop leakage and that was from the appellant's witness. If I could take your Honours then to page 110 at line 17:
The benefit of materials such as that would be, in the circumstances we have described, would be in effect to contain all the material within that blue pocket material -
the blue pocket material was the flap -
That's one of the benefits of the material, yes.
This is when they are talking about the respondent's product.
There is no advantage in having any of the running material go through to the other side of the pocket material, is there?---No.
In fact, if any running material got through to the outside of that pocket material, it is a recipe for disaster, is not it?---Not entirely but it is not what you're aiming to do.
It is the last thing you would want to happen, is not it?---I don't know if it's the last thing, but, yes. As I explained in the affidavit, one of the problems is that in order to achieve that you need a balance. If fluid does get on the outside it must be able to go back in.
He is trying to retrieve that a little bit because - if I can stop there for a moment, your Honours, with respect to Justice Burchett, the idea that one is trying to have a barrier on the off-chance that something gets over the top so that it could get back in while at the same time you are trying to stop something getting through it is a finding of fact which the Full Court did not accept and one can see why as a matter of simple logic.
GLEESON CJ: Well, what do you say was the advantage in Mr Enloe's idea of having a pervious flap? What was the utility?
MRS BENNETT: The question of the advantage or utility is not, of course, one that we are talking about here. We do not say there is necessarily any advantage or utility in it.
GLEESON CJ: No, but if there is, what is it?
MRS BENNETT: We cannot see one, your Honour. We cannot see an advantage of fluid pervious flaps. What we see is a - - -
GLEESON CJ: Was there a finding that your client tried to copy this?
MRS BENNETT: The issue of infringement has not been determined by the Full Court and that is a live issue.
GLEESON CJ: Was there a finding at first instance that your client copied this?
MRS BENNETT: There was a finding of infringement at first instance.
GLEESON CJ: Why then did they - - -
MRS BENNETT: There was an argument about degrees of permeability. The argument that was put on infringement was that our flap was, in fact, impermeable and the finding was - I think my learned friend, Mr Catterns, mentioned it in his address - where his Honour said, well, because you can force it through, it has a degree of permeability and, therefore, it is permeable.
GLEESON CJ: I thought the advantage was that described on page 111 at lines 8 and 9, or the supposed advantage. I have got no idea of whether it is an advantage or not.
MRS BENNETT: Yes. Well, bearing in mind this is the appellant's witness, Mr Butler, he was trying to find a basis to give some advantage to fluid permeability and the argument was that if fluid went over the top and got into that little area between the flap and the backing, that it could get back through.
GLEESON CJ: Well, presumably they were claiming a monopoly for this invention because they thought that somebody would think that it was a good thing to achieve that consequence, that is, permeability, to a degree.
MRS BENNETT: Yes. Well, that is what they have claimed the monopoly in, but at the same time, what they have told the person to make, and what a person would understand in going to make it - would have in the back of the mind and would apply on the evidence from Mr Butler, to read in the specification that the point of the flap normally would be to prevent leakage. If the appellant thought there was some cute advantage in having a pervious flap so that something could go back through, that is what they say their invention is, but that is not what they are teaching someone to make.
GLEESON CJ: Well, suppose they had actually spelt out what you put a couple of minutes ago, that is to say, suppose they had actually said in this document, "Unless you make the flaps permeable, there is no difference between this diaper and that invented by Proctor and Gamble."
MRS BENNETT: Proctor and Gamble's was impermeable. I am sorry, unless you make it permeable.
GLEESON CJ: That is right. "Unless you make it permeable there is no difference between this diaper and that invented by Proctor and Gamble and, therefore, we are claiming a monopoly only in relation to this diaper made with permeable flaps." Suppose that actually spelt that out. How would that have lined up with section 40 of the Act?
MRS BENNETT: Well, first, of course, they did not, and omission can lead to confusion quite easily. Secondly, then one would have real questions of whether or not an invention had been disclosed on the face of a specification. One could have all sorts of arguments that arose on other grounds that would be available to attack the patent. So far as the requirement for full description was concerned, if what they said was to say to the skilled reader, or the person trying to work the invention after the patent had expired, "You would think, by reading this, that you would be using an impermeable barrier, and we are specifically telling you that you must not use an impermeable barrier, according to what we say we are giving the world, but only a permeable one." That may have had some consequences, but that is not what they said. They said it is optional. You can optionally use impermeable - - -
GUMMOW J: But preferably.
MRS BENNETT: Well, they say preferably you may - well, it is still optional; it is still an option - and that "preferably" only applies to the second embodiment of the invention. So, if one accepts that, then the first embodiment of the invention could well be thought to be made - if one was making the first embodiment, one could easily make impermeable flaps.
Then when you get to the claim and you see that it says that it is permeable and you have been told either it can be impermeable or maybe it can be fluid permeable or maybe it can be vapour permeable, then as the Full Court has said, there is either no mention in the body of the specification directing you to make a permeable flap or it is totally confusing.
GUMMOW J: But the invention may have a number of embodiments. That is another problem that keeps cropping up.
MRS BENNETT: Yes, the invention may have a number of embodiments but the embodiments must - - -
GUMMOW J: Which, by definition, will not all have the same elements.
MRS BENNETT: No, but they will have the core elements. The embodiments of the - - -
GUMMOW J: That is a question on infringement.
MRS BENNETT: No, it is more than a question on infringement. It is the question of full description and it answers most of what my learned friend has sought, with great respect, to confuse the issue with respect to fair basis because one can have, for example - one can describe an invention. That is, to use the words of the Full Court, the core of the invention.
GUMMOW J: Where does that expression come from?
MRS BENNETT: The Full Court used it here.
GUMMOW J: I know. Where did they get it from?
MRS BENNETT: They probably took it from - inferentially they took it from submissions that were put by the respondent and I have referred your Honours to evidence where Mr Butler said the core of the invention was fluid permeable flaps. And the word "essence" of the invention has been used in the cases. It is a question of "core" or "essence" of the invention.
GUMMOW J: No, they are used in infringement questions.
MRS BENNETT: In Welch Perrin v Worrel it was not being used, with respect, in the context of infringement. What we say is very simple, your Honours. One has to be able to see from the specification what is the invention. One may then make various embodiments of the invention by having different characteristics, which has been done here.
For example, on page 188, at the bottom of the page, they talk about a flap which is provided with certain elasticised means and certain positions. That is reflected in one of the dependent claims. There are additional features you can add on to the invention, either by way of a preferred embodiment, which may add features to the invention, or an additional optional feature that you can add to the invention, or various things that you can add on to it which thereby limit the invention, because if you add a feature, you are limiting the invention down.
GUMMOW J: No, you are limiting the claim.
MRS BENNETT: Well, you are limiting the subject matter. If the requirement is that it have flaps and that the flaps be rectangular, you are limiting it down. But the invention is the flaps. What one must do in all cases is - - -
GUMMOW J: No, the invention is the combination.
MRS BENNETT: The invention is the combination which includes the flaps - - -
GUMMOW J: The flaps are an integer.
MRS BENNETT: As an integer, and in a dependent claim, they say the invention is a combination which includes the flaps which are further rectangular, as an additional requirement or integer. But what one must do, with respect, is still have the basic invention as part of the claim. One can add to it additional features if they are fairly based, but that is not the same thing as saying that one can change the invention itself, because what one must do is not only have the claims fairly based, but, more importantly, and what we are talking about in this case, one must be able to see from the complete specification what the invention is and how to make it.
HAYNE J: As to that and your argument about containment and the purpose of the flaps being to contain suggesting that the flaps would ordinarily be expected to be made of impervious material, do I capture at least part of your argument in that way?
MRS BENNETT: Yes, the first part of the specification directs you to impervious material.
HAYNE J: Yes. Can I just take you to 194 or 195 where we have the diagrammatic representations. If we look at 194, the flaps are item 15, in figure 1 and figure 2. Is that right?
MRS BENNETT: Yes, your Honour.
HAYNE J: The intention is, is it not, that the fluid ultimately will reside in the substrate in 19?
MRS BENNETT: No, the idea is the fluid will go through the body in 10 - - -
HAYNE J: Into 19, in figure 2.
MRS BENNETT: Into 19, which is the bit where the backing is.
HAYNE J: Item 19 is the absorbent material, 12 is the impervious backing.
MRS BENNETT: Sorry, your Honour. Yes.
HAYNE J: The intended destination of the fluid is 19, is that right?
MRS BENNETT: Yes, your Honour.
HAYNE J: Why does that suggest that you would wish item 15 to be impervious to fluid, rather than have it transferring freely in or out of 15 on its way to its ultimate destination in 19?
MRS BENNETT: Because 15, the flap, is not stopping it or affecting it going through downwards, but to try to stop it going out sideways. And when you have an explosive bowel movement, then the tendency is for it not to get caught up going through, but to go out sideways, and that the elasticised backing is insufficient to stop that happening. So you put a flap up there to stop it first before it gets to the backing.
CALLINAN J: Dr Bennett, are any of these in Court? I mean, other people might be able to follow the diagrams. I cannot.
GUMMOW J: Well, are we confident that these objects reproduce the diagrams, reproduce the embodiments? Experience teaches they rarely do.
MRS BENNETT: Not in terms of - relevantly for today, we are not talking about whether the flap material is pervious or impervious in this diaper but simply, I think what your Honour Justice Callinan wants to see is how the flap itself works within the - - -
CALLINAN J: The mechanics that Justice Hayne has described, I - - -
HAYNE J: About an hour's supply, I think, on the Bar table at the moment, Dr Bennett.
CALLINAN J: What we are seeing, is that what is relevantly reproduced at page 194?
MRS BENNETT: Your Honour, I understand these are the current day Huggies which are where the flaps are impermeable but the structure of the diaper - - -
GUMMOW J: Well, is this an allegedly infringing product?
MRS BENNETT: This is the appellant's own product as currently marketed.
GUMMOW J: One is to assume that that reproduces the actual embodiment, is that right, because if it is not I am not going to look at it.
GLEESON CJ: I thought you told us that as currently marketed the appellant's product was impervious?
MRS BENNETT: Yes, your Honour, but the way the flap works, if that is what your Honours wish to see is in accordance with the description. It is just the material that is not. So your Honours will see that the flap stands up. It sort of forms the same part of the back where the baby's bottom itself is but where the legs come it stands up as the elastic is stretched and it goes around the baby's legs to provide a second stopping-off point. Your Honour, Justice Hayne is familiar with these nappies at this stage. Your Honour will see that as it goes around the baby's leg, if I can use my arm as the leg - - -
GLEESON CJ: Not just Justice Hayne.
CALLINAN J: No, that is right.
HAYNE J: And, in fact, Dr Bennett, I think you insult him.
MRS BENNETT: Well, I apologise. I did not wish to cast any aspersions on the knowledge of this Court.
GUMMOW J: Let us get on, really. I regard this as a diversion myself.
MRS BENNETT: I am answering the question, your Honour.
McHUGH J: I do not think you should assume that Justice Gummow or I have any great knowledge of these things.
GUMMOW J: Well, I just do not look at things unless they are exhibits. I am old fashioned and my experience of trying these cases is that the product the patentee sells is very rarely the product specifically in the embodiment and if someone can assure me of that I will look at it. If they cannot I will not.
MRS BENNETT: It is in terms of structure but not of - material, it is in accordance with the specification.
GUMMOW J: The temptation for judges to start fiddling around with these objects is almost irresistible. I have learned to resist it.
CALLINAN J: All I wanted it for was to understand how it worked. That is all. I would like to hear how it works.
MRS BENNETT: Thank you, your Honour. How it works is that it stands up around the baby's leg as a stand-up flap, your Honour can see that what it does is to provide a second barrier to material going out to the side around the baby's leg whereas if the material is going straight down it does not interfere with the function of the pad itself from taking it through into the area behind or between it and the backing. So it does not have anything, with respect, to - I withdraw it. The prime purpose of it is not the matter, with respect, that Justice Hayne referred to because it does not impact at all upon the movement downwards. It only impacts upon the movement sideways and, in particular, around the legs. That is what the specification is describing as the problem before, that there was a problem with the material moving sideways around the leg.
GLEESON CJ: But was that a problem with the Proctor and Gamble product?
MRS BENNETT: The Proctor and Gamble product apparently served to overcome the problem, which was to have an impermeable flap, as the present product is, around the baby's legs. It is the product - that is presumably why there was litigation. I mean, without going into it, Proctor and Gamble had a product the same as the appellant's specification except it was impermeable. The appellant now manufactures an impermeable flap product.
But if I can now take your Honours to the decision of the Full Court. Sorry, there is one other matter of evidence I can take your Honours to. At page 203, which is in the affidavit of Mr Butler, paragraph 9, again he says that the invention of the appellant's patent:
is directed towards the absorbent garment as claimed including the combination of leg elastics and separate first and second elasticised containment flaps (where such flaps are made of fluid pervious fabric).
So, again, the core of the invention as claimed by the appellant is of fluid pervious flaps. In Sami Svendsen, which I will come to, Justice Kitto took account of evidence such as that in coming to the decision there that after one looked at the core of the invention, if that was not what was described, then the invention was bad for lack of full description. That is the case that the Full Court relied upon.
As to the question of whether or not there was any suggestion of trapping moisture, the matter that Justice Burchett referred to, there is, of course, nothing in the patent that directs the reader or tells anyone anything about using this invention to stop moisture being trapped that goes over the top. It is all about containing it out sideways.
Now, if I can take your Honours to the Full Court decision which commences at page 398. Our submission is that this is a totally consistent way of looking at the law on full description and that their Honours did not err in any way outside either the requirements of the section or the few cases that have dealt with this particular aspect of section 40(2)(a). They decided it solely by reference to that. Your Honours will see, if you go to page 399 then, their Honours refer to the Rehm Case, and my learned friend has taken you through that, then to Patent Gesellschaft, and they cite the passage from Patent Gesellschaft which says, at line 40:
The specification contains a full description if it makes the nature of the invention plain to persons having reasonably competent knowledge of the subject and also makes it plain, to persons having reasonable skill, how to perform the invention.
My learned friend raised the fact that the section does not actually include the word "nature" any more. We, in our written submissions, refer to The Dean Report where they said, in respect of what was then clause 39, that they deleted the reference to "nature" because the requirement to describe the invention includes the requirement to state the nature of the invention, but is broader than that requirement. My learned friend, Mr Catterns, pointed out to your Honours today that that was in respect of a provisional specification but, of course, we know from section 40(1) that:
A provisional specification must describe the invention.
And in subsection (2) that:
A complete specification must:
(a) describe the invention fully -
So the point we make from The Dean Report stands, and that is that the requirement to describe the invention is a requirement to describe the invention, including the nature of the invention. That does not derogate in any way from that requirement.
Their Honours referred to the abstract, which I have taken your Honours to, and then said at page 400, in paragraph 8:
As the section of the specification headed "Summary of the Invention" makes clear, the claimed invention relates to the "fecal containment flap" rather than to the "unitary disposal diaper with elasticised legs" itself -
relates to. Then the sentence that my learned friend did not read to your Honours:
It is the case of the respondent that the core of the invention is an inner barrier comprised of liquid pervious flaps.
Then they note the fact that it is "not until the last paragraph" that there is a reference to the material at all, a distinct reference:
from which the flaps should be made. It is not entirely clear whether this paragraph is intended to refer to a particular embodiment of the invention or to the invention generally. It may be, as Tamberlin J considered, that the paragraph relates only to one embodiment.
I stop for a moment to point out, if I may, your Honours, that if it only refers to one embodiment, of course, then it has not been written up as part and parcel of the invention itself - of the core of the invention, because, of course, if the core of the invention is fluid pervious flaps, then what you have described is an embodiment of the invention that does not - you are not directed to use fluid pervious flaps, but rather fluid impervious. So the core of the invention is not in the first embodiment as described.
They then go on to cite that passage from the last part of the body of the specification. Their Honours then say that there is no need to deal with what preferably qualifies because there is nothing ambiguous about the expression "vapour and/or fluid permeable". At page 401, their Honours say:
The expression cannot fairly be interpreted so as to call necessarily for a material which is fluid permeable. That is, on one available construction of the specification, it says nothing as to an essential feature of the claimed invention; on the other available construction, it is misleading as to that essential feature.
Their Honours then look at the fact that you can make references to the claims "to assist in the construction of doubtful passages", but, of course, they have found that there is no doubtful passage. So then, citing Welch Perrin, they go on to say:
this is, as we read it, a specification in which the requirement that the flaps be liquid permeable appears for the first time in the claims.
In Welch Perrin, their Honours point out - - -
GUMMOW J: I just do not understand all this. I just do not understand what is being said. Is there anywhere where they construe section 40(2)?
MRS BENNETT: They do it by reference to what is said in Patent Gesellschaft, and that is at page 399, line 40: "expressed the relevant test.....in this way". They also refer to your Honour Justice Gummow's decision in Rehm:
the task of the body of the specification is fully to describe the invention including the best method of performing it known to the applicant -
and that the claims are directed to those of monopoly, because, of course, while one looks to full description, to the invention as a whole, the prime requirement of full description is in the body of the specification, and that is what all the cases say. Primarily it is the body of the specification that has to comply with the requirement to fully describe the invention and make it clear. But one can look, under the section, to the whole of it.
GLEESON CJ: But the body of a specification does not end where the claims begin, does it?
MRS BENNETT: Yes it does, your Honour. It has often been said, and I will have to find the exact passage, that the body of a specification ends where the claims begin. That is the distinction between the body of a specification and the claims.
GLEESON CJ: That expression "body", where does that come from?
MRS BENNETT: It is an expression that has just been used in the cases over a period of time to refer to that part of the specification up to but not including the claims. Blanco White uses the expression "the body of a specification" and I think - - -
GLEESON CJ: If you just construed the section literally, it says the specification ends with a claim.
MRS BENNETT: The specification ends with a claim. The body of the specification is that part before the claims. The body of the specification ends before the claims, and - - -
GLEESON CJ: But the specification - what about the word "body"? It says the specification ends with a claim.
MRS BENNETT: Yes, the specification ends with a claim. The rest of it is called the body of a specification. It is old patent jargon, I suppose, and it is used, for example, on page 399 in a passage that is cited from the Rehm Case. That, itself, I think Justice Gummow said earlier, came from Blanco White, which is one of the standard textbooks on patent law.
GLEESON CJ: What is the consequence under section 40 if the specification does more than the statute requires?
MRS BENNETT: I will. If it does more than the statute requires, so long as it applies with the statute it is all right.
GLEESON CJ: So, doing more than the statute requires might give rise to a problem of confusion.
MRS BENNETT: Yes, your Honour.
GLEESON CJ: But apart from that, there is nothing wrong in putting more in?
MRS BENNETT: Well, if you give rise to confusion, then that itself can mean that there has been a lack of compliance.
GLEESON CJ: I understand the confusion, but put aside a confusion problem. Prolixity is not a problem?
MRS BENNETT: No, your Honour. Well, subject to the fact that the claims must be clear and succinct.
GLEESON CJ: The claims? You have just told me the claim is not part of the specification.
MRS BENNETT: No, the claims are not part of the body of a specification. The whole of the specification has a body of it that is primarily required to contain the description and telling a person how to perform the invention.
GLEESON CJ: Well now, what if the body of the specification says too much?
MRS BENNETT: Yes.
GLEESON CJ: That could give rise to a problem of confusion.
MRS BENNETT: Yes.
GLEESON CJ: Apart from that, what is the problem with it saying too much?
MRS BENNETT: Well, if all it has to do, the body of the specification - well, as long as it complies with the section it is all right.
GLEESON CJ: Well, suppose they said, "You can make these diapers with permeable or impermeable flaps. Proctor and Gamble make them now with impermeable flaps and we claim a monopoly in diapers made with permeable flaps." Suppose they had said that, what would be the contravention of the Act?
MRS BENNETT: The core of the invention is the question or the essence of the - one has first to see what the invention is. They are certainly entitled to limit the scope of the claims and not claim all that they have invented. They are entitled to add, within the tests under the Patents Act, other characteristics, if they wish to, as long as the invention itself is defined and described, a part of the definition of the monopoly and describe.
GLEESON CJ: And as long as they tell people how to make it?
MRS BENNETT: And they tell people how to make it.
GLEESON CJ: That is the point of the description.
MRS BENNETT: The whole concept comes back to a very, very simple basic philosophy and that is, that in order to have a valid patent, what the patent team must do is provide the consideration to the public. The tests for that have been formulated in a number of different ways. That has nothing to do with looking to see the monopoly at the moment. Some of the tests for patents deal with looking to see whether the monopoly is well-founded. That is a different question. What the fundamental requirement is, is that when the public wants to have the invention, because the whole idea is to encourage inventors to give the invention to the public, the public must properly be seized of the invention.
Now, what the Act says, if you are going to make the public properly seized of the invention, you have, at the very least, to describe it fully, so that the public knows what the invention is, in terms of what the advance is over the prior art, what is the invention that has been given to the public and how to perform it and in order to perform it, of course, you have to know what it is, because if you want to put together a product made up of different integers into a combination, you have to know what to make it up of, and that is what Welch Perrin points out.
GUMMOW J: Well, it is pretty clear here though.
MRS BENNETT: No, with respect, your Honour, that is exactly what is not clear.
GUMMOW J: Any sensible skilled addressee would at least go to claim 1.
MRS BENNETT: But then that is contrary to two things: the skilled addressee might go to claim 1, but the skilled addressee is also explicitly told that fluid permeable flaps are not necessary and implicitly told to use impermeable flaps. So that the skilled addressee, when he or she - - -
GUMMOW J: But then we get into fair basis questions.
MRS BENNETT: No, we are not getting into fair basis, your Honour. The whole test is, whether or not, the person of ordinary skill is given sufficient instructions to know what it is he or she is meant to be making. They are explicitly told, do not worry if the flaps are permeable or impermeable and then they go to the claims which one can take into account in determining what the invention is, but that is not the prime function of the claims.
GLEESON CJ: But suppose that they had said, "Do not worry about whether they are impermeables." Suppose they had said what was the truth, "These things can be made with permeable or impermeable flaps, and we are only claiming a monopoly in ones made with permeable flaps"?
MRS BENNETT: But they are not saying that, your Honour. They are saying the core of the invention is fluid permeable flaps. That is fundamental to the case that was put to the Full Court, that the core of the invention, the invention itself, was fluid permeable flaps, and that is what their Honours said, and that has not been a subject of any ground of appeal. That is fairly and squarely what their Honours say at page 400 in paragraph 8. They say:
It is the case of the respondent that the core of the invention is an inner barrier comprised of liquid pervious flaps.
Then they go on and show that when you look at it, that is not fully described, and if you take the claims into account in order to see what to do there, is all you have is confusion reigning, because as their Honours say, on one available construction of the specification it says nothing about the essential feature of the claimed invention; on the other, it is misleading as to that essential feature.
Now, their Honours use the language of "essential feature". That does not mean they are getting into of the problems my learned friend has raised about fair basis. One is looking at the substance of what their Honours are saying. They are using the expression "essential feature" as one is saying, "What are the parts that make up the combination of the invention? What is the essence of it?" I mean, this sort of terminology is used. They are everyday words that one has to fight not to use when one is trying to explain what it is you are doing to try and work out what the invention is. It is not using the language of fair basis.
Fair basis is a different test altogether. In the fair basis cases what often happens is, one is looking at extraneous or extra integers that are either alleged to be part of the invention and, therefore, it is argued they should have been in the claims; or, alternatively and more often, they are extra integers in the claims and someone says, "Well, they are not part of the invention." The answer to that often is that it does not matter, as long as there is a real and reasonably clear disclosure of those extra claims.
But none of the fair basis cases say that a claim can be other than a claim to the invention. It can add things onto it. You can have an optional feature, a preferred embodiment, and you can make that part of your claims, as has been done here. If you look at all the claims that follow on from the independent claims, they all say the independent claim with additional features.
McHUGH J: Do you agree that the case comes down to this in the end, that in paragraph 44 of the appellant's submissions it says:
Here the specification enabled the addressee to perform the invention. The claims performed their distinct task of instructing the reader "that an essential feature of the invention was the necessity for the flaps to be liquid pervious -
and that is the contention made. You go to page 191 and you look at the claim. Given what appears from 185 to 190, does 191 tell the reader what the essential feature of the invention is? Is that the issue?
MRS BENNETT: Can I answer that in two ways. Paragraph 44 of the appellant's submissions has assumptions in it that are not valid because what they are saying is that there is no requirement in the body of a specification to do anything other than give a series of, "Do A plus B plus C." In order to enable the person of skill to work the or perform the invention, you have to describe to them what the invention is. Now, the section says that you can look at the whole of it. But all the law is that the primary function of the body of the specification is to describe the invention. That is its primary function.
The claims can be taken into account, but the claims actually have a different purpose. The claims are there to define the monopoly. So, primarily, you would look at what is in the body of a specification to see what the invention is.
McHUGH J: But is that right? For instance, looking at Lahore, I noticed that there are two sentences. "There usually follows a brief summary or general description of what the inventor asserts is the invention, commonly called a consistory clause. This is not an essential part of the description, it is not required by the Act, and it has been held that the same purpose may be quite well met by the claims themselves."
MRS BENNETT: Yes, and that is taken from cases where people have referred in the body of the specifications to the claims or where the body of the specification otherwise makes clear what the invention is. You do not need to have a consistory clause to spell out what the invention is.
McHUGH J: Yes, I know but it comes back - you concede that you can read the whole of the specification, including the claims?
MRS BENNETT: You can.
McHUGH J: Now, given that concession, the question then is, is there really anything in 185 to 190 which negatives what is found, for instance, in claim 1 on page 191.
MRS BENNETT: Yes, plenty. That is exactly what it does. The body of the specification negatives what is in claim 1 leaving the reader trying to understand. The reader does not necessarily - I will start again.
GUMMOW J: Well, it does not negative it. You say it is wider.
MRS BENNETT: No, your Honour, we say it negatives it.
GLEESON CJ: But that is partly because of your theory of containment?
MRS BENNETT: No. No, it is not only that, your Honour. Let me put it this way. Bear in mind that the primary function of the claim is simply to deal with the monopoly because after the patent has lapsed the claims no longer have any work to do in that regard because the monopoly is finished.
GUMMOW J: Yes, but I think the real point, Mrs Bennett, in dividing it up in this way was to tell patentees that you have to get your claims right because you cannot roam at large in the body of the specification to pad out your claims because that is unfair to competitors who might want to infringe.
MRS BENNETT: The classic test for claims though, your Honour, has always been, as they say, to define and as we gave your Honours the definition which suggests to limit, to limit the monopoly claimed. The reason for claims was, as with respect, your Honour said, is to make it clear to people what the monopoly was. Of course, in the old days there was not even a statutory fair basis requirement but what the idea was was so the people who wished to come into the market at the same time knew exactly what the monopoly was of the patent he was claiming. The classic function of the body was to describe the invention itself. That is the classic function because the monopoly may not be for everything that is the invention itself.
Now, therefore primarily under all the classic laws of patents one goes to the body of the specification to see what the invention is. Section 40(2)(a) says you can take into account the claims. It says that. I interpolate, bearing in mind - - -
GUMMOW J: When you say to see what the invention is, to see for what purpose?
MRS BENNETT: To see whether the invention has been fully described, that is, what is the invention and how do you make it?
McHUGH J: The importance of describing the invention fully is that that is the price that is paid for the monopoly that is granted, is it?
MRS BENNETT: Yes, and here, to take the second part of your Honour's question earlier, when you read up to the claims you are told the invention is one thing and you are told to do it in a certain way which is do not worry about permeable - either make it impermeable or do not worry if you make them vapour and/or liquid permeable. Then when you get to the claims, which - if you need to use the claims - my learned friend wants to use the claims to shore up the description of the invention - you are suddenly told, "Well, hang on a second, the claims say the invention requires fluid pervious flaps and so for the first time when you get to the claims you are suddenly told that the requirement for fluid pervious flaps is, on my friend's case, the invention.
GUMMOW J: Now, does it come to this, Mrs Bennett? Whenever a specification is prepared and in the course of progressing through the office, it is necessary because there is a citation of some prior art, say, it is necessary to reduce a claim that that brings about destruction unless there is also an amendment to the body.
MRS BENNETT: No, your Honour, not necessarily and no. I can see what your Honour is getting at but the answer is no because of this. If one has, for example - - -
GUMMOW J: Well, what should have happened here? Were these people hung by the neck the moment they contracted the claim when it went through the office? What else could they have done?
MRS BENNETT: What they have done is to attempt to add an integer to the claim to avoid novelty.
GUMMOW J: But it is not said that the amendment was badly made?
MRS BENNETT: There are all sorts of other arguments about this patent, your Honour.
GUMMOW J: Yes, but for the purposes of this argument. What should they have done?
MRS BENNETT: There were arguments on fair basis.
GUMMOW J: What should they have done to avoid the razor you are now holding at their throat?
MRS BENNETT: There has been a case on - there is an issue on fair basis that was raised before the Full Court.
GUMMOW J: I know, but just looking at your argument, it did go forward in a broader set of claims, the claims were narrowed, is that the end of it?
MRS BENNETT: Your Honour, one could argue this - - -
GUMMOW J: What should they have done? What could they have done in terms of the Act?
MRS BENNETT: Your Honour, there are two ways of looking at it. One is that by adding that integer, if it was - - -
GUMMOW J: This happens all the time, as I understand it.
MRS BENNETT: What often happens is that people add integers that do not change the nature of the invention that is said to be the actual invention itself. They add things on to it, which you can do and it is done in dependent claims all the time. It is adding things on to the invention, it is not changing it. There is an argument, of course, in this case that that - if the invention is the flaps and they can be permeable or impermeable, then adding that integer arguably is an inessential integer, so a mechanical equivalent of an inessential integer is not - if that were the only way they were trying to fix up novelty, then there is an argument they have not done it because it is inessential.
But they do not say that it is inessential. They do not say that you can have permeable or impermeable flaps and therefore it does not matter whether you use permeable or impermeable; what they say is the invention is permeable, and they have added that into the claims. They have added it to the claim and then said, well, here is the invention, permeable flaps. We have added it on and we say this is the invention. We do not say permeable flaps is an inessential integer, we say it is part of the combination. That is the invention now, a nappy with flaps which are permeable. That is what they have in their claim and they are relying upon that - - -
GUMMOW J: I know that, Mrs Bennett, but it is not helping me. What should they have done? Should they have altered the body? Can they do that? Could they have done that?
MRS BENNETT: They can, within the constraints of the Patents Act. They can amend the body, then there is a question of whether they are adding new matter, and they can defer their priority date if they are. If it is not adding new matter - and one of the cases I will take your Honour to pointed out that if you do not amend the body when you amend the claim, that can be the end of it. If you want to add something to the claim you may need to amend the body and, if you do not, your claim is bad.
There are various things they could have tried to do. Your Honour, the answer could also be that, in fact, there was no invention here, no patentable invention here.
GUMMOW J: When you say "no patentable invention", what does that mean?
MRS BENNETT: An invention in fact is not novel.
GUMMOW J: Well, that is another question.
MRS BENNETT: That is what I am saying.
GUMMOW J: That is yet to be decided by the Full Court.
MRS BENNETT: Yes, it has to be, but there are assumptions. When your Honour says to me "What could they do?", they can do things that they are allowed to do within the framework, but what they cannot do is to change the nature of the invention. What they cannot do is to is to - or the nature - the essence or core of the invention. What they are saying is that by adding that integer into the claims, this is what the invention is, and the very fact that they have added it shows that what they have described in the body and told you to make is not the invention.
My learned friend took you to the original unamended patent where they said the core of the invention in that case, they said, apparently, was the flaps. They agree, then, we have told you to make flaps that can be permeable or impermeable. Now they say, oh no, now we have changed it, now we say the invention is - - -
GLEESON CJ: Just a minute. No 2, the present claim was always No 2, was it not? In the original the permeable flaps was claim No 2.
MRS BENNETT: Yes.
GLEESON CJ: So what they did was delete No 1.
MRS BENNETT: Yes. But now they are saying that the invention itself - - -
GLEESON CJ: Because of the prior art.
MRS BENNETT: Yes. Now they are saying that the invention itself, that is the basis - that is a finding of fact that has been made by the Full Court that has not been challenged and that is - - -
GLEESON CJ: I was only suggesting that you said they had added an integer by way of amendment.
MRS BENNETT: I am sorry. Added an integer to what they say the basic invention is. They say now - they are caught with the fact that they have relied for other reasons, for other reasons and other aspects of the attacks on invalidity of this patent. Their case before the Full Court was, and there was evidence to support it for them, that the core of the invention, the invention itself, the essence, whatever you want to call it, was fluid permeable flaps and what they have described is something contrary to that. So when you look at the whole of it, the person who is trying to construe the entire document to work out what is the invention and what is it that I make is totally confused.
The body of it, which went to a different question initially, says it does not matter what flaps you use. So the invention that you get so far or what you are told to make is something that does not matter. So you are told to make something that is not the invention. You are told you can make a nappy with vapour permeable, but not fluid permeable or fluid impermeable flaps. So you are directed to make something that is not the invention itself.
McHUGH J: But is it not well established that the reasonably skilled workman is entitled to accept that there are mistakes and errors and work on that basis?
MRS BENNETT: A mistake or error is one thing. If you are actually told one thing, specifically spelt out for you, it does not have to be fluid permeable, it can preferably be, or it may be, vapour permeable and fluid permeable or neither. That is not a question of making up things that are missing. That has been positively told to do the opposite. The evidence, of course, was that the skilled reader - if you take the evidence I took your Honours to from Mr Butler - was that basically what everyone was trying to do was to stop things going through, so that basically people would have gone to impermeable flaps, and that is what the patent is telling you to do.
It is exactly what the Full Court, with respect, has said. It has said, if you want to look at everything to see whether it has been fully described, bearing in mind that the invention is the fluid permeable flaps, you are left in a total quandary. Either the body of a specification which is telling you what to make, is not telling you to make fluid permeable flaps or it is giving you, if you add in the claim to tell you what to do, it is leading you this way, in both directions at the same time. So, the person following the body of a specification to tell them how to make it, is going to end up making something that is not the invention. So they do not know what the invention is.
Your Honours, I appreciate the time and I need to give my learned friend some time in reply. There are only two other cases that we need to refer your Honours to. One is Sami Svendsen, which is very much on point, as is the case of Weiss v Lufft, two cases which obviously say it a lot better than I have been able to put it to your Honours. First, my learned friend sought to distinguish Sami Svendsen on some sort of concept that it was for an improvement. Well, first, there is no suggestion in the decision of Justice Kitto that there was any limitation but, in any event, that is exactly the same thing here. Here they are describing a nappy, or a nappy with flaps, where the improvement is said to be fluid permeability, and, in that case, they were describing a sausage casing machine which was meant to have an improvement in the casing. So they were both combination patents made up of different factors or mechanical means or integers or whatever you want to call them, bearing in mind that we are just trying to find words that fit the test that we are applying at the moment, so it is very much the same situation. If your Honours have that, it is [1968] HCA 65; 119 CLR 156.
GUMMOW J: Just before you do that, can I read you a passage from paragraph 139 of Mr Bannon's book. He says:
It is not necessary and often impossible for the specification to state the inventive step or steps -
and he refers to Fussell at 25 RPC.
There is a danger of misunderstanding on this point -
and then he refers to Washex which, I think is Sir Ninian Stephens judgment at 49 ALJR.
Nevertheless, if the patentee chooses to assert what it is, either directly or by inference in his specification, the Court may accept that admission.
And then he says of Sami Svendsen, in paragraph 101:
Kitto J expressed the opinion that a specification offended against s 40(1) of the Act if it did not describe the invention or enable "the reader to discern what was the invention in the total thing that it describes". The references to discerning the invention in the totality of the description, however, is in danger of being given undue emphasis and requires care and expression.
And then he refers to Washex.
MRS BENNETT: Yes, your Honour. Two matters in relation to that: we have never said that the appellant is required to state the inventive step. That is not what we are saying; we are saying they are required to fully describe the invention. But if - - -
GUMMOW J: But you say they have to describe the core of the invention, which I take it is the inventive step - is a synonym for inventive step.
MRS BENNETT: No, no, with respect, no.
GUMMOW J: Otherwise I do not know what is being said.
MRS BENNETT: The core of the invention is to describe what the invention is - - -
GUMMOW J: It is a metaphor for something, the word "core".
MRS BENNETT: It is the invention itself. You have to know what the invention is.
GUMMOW J: That itself is an incomplete statement.
MRS BENNETT: Not necessarily.
GUMMOW J: The invention is a combination which may or may not be patentable, if it new, et cetera.
MRS BENNETT: Yes, you have to describe what - perhaps I could put it a better way - - -
GUMMOW J: You avoid the appellation obvious by saying it has an inventive step.
MRS BENNETT: Inventive step is a different question. I am going to come to the admission that we can use - we say there are admissions here that can be used, that is - - -
GUMMOW J: I am conscious that it is 10 to 4.
MRS BENNETT: Yes, your Honour, I am sorry about that. What Welch Perrin said was that in a patent for a combination such as this, the most important function of a body of a specification is to show what are the mechanical means which, operating together, produce the result claimed. In other words, if I can take the liberty of putting it into context here, what are the different bits of the nappy which, operating together, are necessary to produce the result claimed? That is different to saying, "What we have done is - - -
GUMMOW J: It is not a result, it is a combination.
MRS BENNETT: Yes, yes, what are the mechanical means, which operating together, that is, what is the combination - what is the combination?
GUMMOW J: Well, look at claim 1.
MRS BENNETT: Pardon?
GUMMOW J: One looks at claim 1.
MRS BENNETT: But then you are taught to make something totally different when you look to see what is described. But to the extent, of course, that our learned friends - if, in fact, we can seize upon the second part, of course, although it is not really for your Honours today, if they have tried to say, as what we have described from the background what the inventive step is, which is to provide a second barrier to contain it, then we can use that against them as an admission that what they are really looking to do is to tell you to use impermeable as the invention. That, of course - - -
GUMMOW J: But there is no attack on obviousness, is there?
MRS BENNETT: There was no attack on obviousness because there was no evidence available to prove that the prior art was common general knowledge. It was not a concession that there was an inventive step; it was for the reason that common general knowledge could not be established.
GUMMOW J: A question whether there was a concession. The question is there was not an attack?
MRS BENNETT: Yes, there was no attack on obviousness for that reason. At first instance, but that was not followed through on the appeal.
GUMMOW J: So it is novelty or nothing.
MRS BENNETT: Novelty, infringement, fair basis and lack of full description. One of the reasons - I mean, it was important to the appellant - - -
GUMMOW J: But apart from drafting matters, it is novelty or nothing.
MRS BENNETT: Infringement.
GUMMOW J: Of course, yes, but I am talking about validity at the moment.
MRS BENNETT: Fair basis - if you talk of fair basis is a drafting matter. With the greatest respect, your Honour, I appreciate how your Honour is distinguishing between them, but it is not a question, obviously, of mere drafting, because it is also a question of lack of compliance with the Act.
GUMMOW J: Of course, but it is drafting. You have to draft in a fashion that complies with the Act. Anyhow, I am taking up time.
MRS BENNETT: Your Honour, in Sami Svendsen, Justice Kitto was looking at an improvement, similarly to the sort of improvement - and one can easily see, and I will not take your Honours' time, if one wishes to substitute nappies for machines and flaps for casings, one can see what his Honour is saying if one just draws the analogies. What his Honour says at page 158, he points out that:
The matter described in the specification was an invention of a unit for so holding a sausage casing, or sausage skin, made of gut, as to facilitate the introduction of sausage meat.....An essential feature of the invention.....was the provision of at least one tab, or ear, by which the unit might be drawn -
he then goes on, over the page at page 159, at the top of the page, about five lines down, to say:
The first claim defines the invention in the terms of the consistory clause, and the next eleven claims, while introducing variations, follow its example in treating the ear or tab as an essential feature of the invention.
The next paragraph:
A reader of the specification who knew nothing of the prior art would gain a clear impression that the quality of invention was being claimed for the whole idea of a holder for casing gut -
bearing in mind that in this context, as in here, the claim was not to the entirety of it, the claim was just for the tab. So, he is still saying that a reader of a specification would gain the clear impression, as they do here, that the quality of invention was being claimed for, we interpolate, permeable or impermeable flaps.
He would not learn that the idea of a holder was old and that the provision of the tab to facilitate drawing the holder on to the stuffing horn was the only advance -
I interpolate, from the specification up to there before the claims -
That the holder itself, including a stiffening insert, was not new appears clearly from the evidence.
Then he goes on. If I can take your Honours in that context then, to page 164, bearing in mind that the body described the machine and the claims made it clear it was only talking about one aspect of the machine:
I return now to the requirements of s. 40 (1), namely -
and he refers to complete specification. He refers to the evidence there about inventive step and he refers to it later in respect of admissions as to what the invention was on page 165. He talks about Mr Flomen's description of where the inventive step was.
one must consider whether an application for a patent should be granted, if there is no other valid objection to it, where the complete specification (a) in the body of it describes the invention as being of the entirety of a holder for casing gut, comprising.....in each of the claims defines the invention in similarly wide terms. The provision of the tab or ear was at best an improvement on a known device -
which is the same here as the flaps -
not making the device a new thing but merely facilitating the use of an old thing in the old way for the old purpose. It seems to me impossible to regard the claims of the specifications as being for a new combination of old integers.
Then his Honour goes on, again about 10 lines down:
Assuming that there was an inventive step in this improvement, I am of opinion, first, that the specification as a whole offends against s. 40(1) -
which is the requirement of full description -
by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes; and, secondly, that the claims themselves offend against s. 40(1) -
and then the reference to Mr Flomen's evidence is at about point 7 of the page:
Mr. Flomen, one of the actual inventors, contains clear admissions, indeed positive assertions, of facts which leave no room for doubt that the specification.....in its claims disobeys s. 40(1).
So that, unexceptionally, was what was applied by the majority in this case. What their Honours did not refer to, and it was probably because it was our mistake before their Honours, was another case that deals with this also very clearly which is Weiss v Lufft [1941] HCA 19; 65 CLR 528. In the decision of Justice Starke, which commences at 531, if I can take your Honours to page 532 his Honour - - -
GUMMOW J: This is, you say, what should have happened here.
MRS BENNETT: Yes, your Honour. If your Honours go to the first full paragraph on page 532 his Honour sets out what was there section 36 which prescribes that they:
must fully describe and ascertain the invention and the manner in which it is to be performed, and must end with a distinct statement of the invention claimed. It is difficult to ascertain from the body of the specification, in the present case, though there are -
masses of material on it -
what the appellant invented.
Just stopping there, if the invention here is a combination consisting in part of fluid pervious flaps, it is impossible to understand from the body of the specification that that is what the inventor says that it has invented. Similarly, to this case:
The specification commences.....The objects of the invention, according to the specification, are to provide a compact machine, improved methods for attaining -
it, et cetera. He then takes it through the specification as I have here, through the body of the specification, and then at page 533, the first major paragraph:
It might be gathered from the body of the specification that the printing press, which is described with such detail, was the appellant's invention, and that the doctor reciprocating mechanism and the ink and solvent supply and circulation were important features of that invention. The appellant, having, as the specification states, fully described and ascertained his invention and the manner in which it is to be performed, then sets forth no less than thirty-two claiming clauses. In none of these does he claim a printing press constructed in accordance with the description upon which so many columns of printed matter have been lavished. In the main, his claims are for various features or elements in the intaglio printing press, and not for the machine constructed and made according to his specification and illustrated by the drawings attached to the specification.
Similarly here, the same concept. It is a question of looking to see what the different parts of the specification are meant to tell you and then when you get to the claims you come to something totally different. Here, his Honour said that that did not comply with the requirement for full description.
Justice McTiernan dealt with it at page 535. He does not really deal with that point specifically. If I could take your Honour to the decision of Justice Williams at page 538, in the second-last paragraph at about point 7:
A careful perusal of the body of the specification would, therefore, lead a reader to expect that the claims would be for the whole apparatus there described, with subsidiary claims for the process and means for sealing the openings already mentioned, for the means described for supplying the ink -
et cetera. Then he goes on over the page to say, about point 4 of the page in the second paragraph about five lines down:
Even for the purpose of this wide claim the reference to the whole press described in the body of the specification as the invention is misleading. Such a detailed description could only be justified provided the inventor made it clear that the purpose of its insertion was merely to show how such a high-speed press embodying his improvements could be manufactured -
that is, only if in the body of the specification did they make it absolutely clear why they wanted fluid permeable flaps, which really picks up what they did not do which your Honour the Chief Justice put to me.
Sec. 36 of the Act provides that a complete specification must fully describe and ascertain the invention and the manner in which is to be performed -
and we say that the requirement for full description includes the requirement to:
ascertain the invention and the manner in which it is to be performed, and must end with a distinct statement of the invention claimed. The present specification does not, even in relation to the original claims, describe the invention, because it purports to describe as an invention the whole press, whereas the invention is restricted to certain of its parts.
Then at page 541, his Honour then deals with another aspect which is amendment which, of course, has a very different test, and he points out that each patent must be looked at under its own bases.
Your Honours, before lunch I referred very briefly to what was said by the Full Court in the recent decision of ICI Chemicals v Lubrizol which was a decision of the Full Court on 20 September, and I think it was on my learned friend's list of authorities. Without bothering your Honours - I see your Honours have copies. One way of looking at it, or the way in which their Honours put it at paragraph 99, perhaps, makes clearer what I have been trying to put to your Honours before about the difference between the invention itself and additional matters within the scope of that invention that can be added. Their Honours said at paragraph 99 that:
there is nothing unusual or improper about a series of claims the first of which may be a broad claim, claiming substantially the entirety of the invention described in the body of the specification.....the subsequent claims being within the territory marked out by the first.....but claiming smaller portions of it.
Now, what my learned friend, Mr Catterns, is putting is that we are saying that you must fully describe as the invention each of those subsequent claims within the territory. We are not saying that; it is an elision, with respect, to say that we are and, quite clearly, the Full Court was not saying that. Again, at paragraph 111, after dealing in paragraph 109 with Weiss v Lufft and adopting it - - -
GUMMOW J: Sorry, which paragraph was that Mrs Bennett?
MRS BENNETT: Sorry, 111. Although, in the facts of that case they did not find that it mattered, when I talked about the "gold mine" earlier, they say in 111, about line 6:
There may be cases where what is left -
that is after additional matters are added -
is so limited, and so substantially different from the "gold mine", that it would be found not to be fairly based on the specification.
Now, this is in the context of fair basis, but what we draw from it is the fact that there was a difference between the "gold mine" which is the invention and matters that you add to it which bring in the concepts of fair basis but do not impact upon the requirement for full description. The full description must be of the gold mine and the gold mine must be what is clear, that is the - - -
GUMMOW J: At 109, though, they point that Weiss v Lufft preceded the 1952 Act and may well have been the reason for fair basing being introduced.
MRS BENNETT: When one reads the Dean Report, one sees that the fair basing requirement was brought in because of changes in the English law and a desire to keep that there at the moment. There is also discussion as the fact that there was no - but certainly Weiss v Lufft deals with different aspects, it deals with an amendment as well, and that is where fair basing comes into it, because the amendment affects priority dates, as your Honour would know, but that does not deal with the aspect of Weiss v Lufft that deals with full description. It has always been a ground of revocation if the claims were too wide, it just was not a statutory one.
Your Honours, just a couple of minor matters to clarify, as well. So far as the international aspect is concerned, we put much of that into our written submissions. We say that section 40(2)(a) is totally in accordance, as is the interpretation we are putting, with the PCT which requires a patentee fully to describe the nature of the invention and the way in which to perform it. We have set out the fact that while other countries also comply with the PCT, they do it in different ways. As long as you comply with the PCT, you can add more to it if you wish, so if, in fact, the PCT said only, "You must set out how to perform the invention", and our statute says, "You must do that and also describe the invention itself", we are complying with the PCT, we are just adding another requirement, as does the United States and as does Canada. So, we are consistent with other countries in complying with the PCT provisions but adding further requirements to it, so there is no suggestion that we are in breach of any international obligations.
It is easy in matters such as this to talk about the floodgates that may happen. It is quite clear from the way the Full Court has determined this case and the fact that it has nothing to do with the whole question of dependent claims that there is no floodgates approach that is going to happen here. There is no impact upon the cases on fair basis.
The requirement for full description goes in parallel with fair basis. Their Honours were simply saying, in effect, that what you must do is to find out what are the parts that you need to make up the invention. There is a difference between looking at the core of the invention or the essence of the invention or the individual items that make up the combination and starting to talk about looking at the comparison between what are described in the claims as essential integers and comparing that with what is disclosed or described in the body of the specification, because in the end, what the body of the specification has to do, even under the law of fair basis, is give a real and reasonably clear description of the invention itself.
It must do that in order to provide a fair basis for the claims. So there is no inconsistency with the law of fair basis which requires the body of a specification to describe the invention at all, in fact, it is totally consistent with that aspect.
Simply to close by saying, your Honours, two things. Claim 1 is not a limitation to the invention. Claim 1 is the independent claim relied upon by the appellant to say what the invention is, to comply with its requirement to "describe the invention fully", and that is inconsistent with the rest of the specification. If the appellant is correct, what, in effect, they are saying, we submit, is that there is no work for the body of the specification to do, and that is inconsistent with a very, very long line of authority and also, in our respectful submission, inconsistent with the requirements of the Act. May it please the Court.
GLEESON CJ: Yes, Mr Catterns.
MR CATTERNS: May it please the Court. I will be very brief, your Honours. First, your Honours, there is no concept of body in section 40(2)(a), although the books in the cases do use that word to describe that part of the specification which is not the claims, but there is no statutory concept and, there being no statutory concept of body, there is no particular task that the body, as distinct from the claims, must perform in section 40(2)(a), although it must provide fair basis in terms of section 40(3), because the claims could not bootstrap themselves for fair basis.
In answer to his Honour Justice McHugh's rhetorical question, this is not a black art. The reason there is a one-way firewall, to use my friend's phrase, to control the use of the body in construing the claims is, of course, that it is a monopoly, but even there the firewall is by no means perfect. You can have a definition in the body for the purpose of the claims and you can clear up ambiguity. More generally, the whole document gets read to give context in the modern way.
Your Honour, there is no policy reason the other way round why you would seal up the claims and to say to the skilled addressee, "You have to shut your eyes to the claims and all you are allowed to read - - -
GUMMOW J: How do you square all of that with what Justice Williams said in Weiss v Lufft 65 CLR at 541 in the middle of the page. I know it is under the 1903 Act. Is he not really directing himself to a point the Chief Justice was raising with Mrs Bennett, what happens if it says too much? Do you not have to pull it back, pull the body back when you pull the claim back?
MR CATTERNS: You cannot any more, your Honour.
GUMMOW J: What stops that?
MR CATTERNS: You cannot, because of section 114 which says you lose your priority date.
McHUGH J: Yes, I know. That is what this case is all about, is it not? That is the commercial reason.
MR CATTERNS: But what his Honour Justice Williams says is the practice is that. It has not been the practice since the predecessor of section 114 was inserted into the Act. The predecessor is section 159A of the 1952 Act. It was inserted, your Honours, either - just looking at the back of the Act now, but I remember this - by Act No 84 of 1962 - sorry, it was inserted by that, and amended by Act No 34 of 1969. I am sorry I do not know it by heart, when Sir Garfield Barwick was Attorney, the periods of his being Attorney, but Sir Garfield Barwick's second reading speech, which explains the whole business of loss of priority date in that, explains very carefully the tension between being allowed to amend and so on.
But, your Honours, what the effect of this would be is, if our friends are right and Weiss v Lufft would apply, nobody can amend their claims because they will have to amend the specification which they cannot do because they lose their priority.
GUMMOW J: What says they lose their priority date?
MR CATTERNS: Section 114, your Honour.
GUMMOW J: Does it say that in terms?
MR CATTERNS: No, your Honour, it says determined in accordance with the regulations, I beg your pardon. Then you go to the regulations and it is Regulation 3.14 of the Patents Regulations 1991 - - -
GUMMOW J: I am not sure we have them.
MR CATTERNS: I am sorry, but may I just read it just quickly?
GUMMOW J: Yes.
MR CATTERNS: It says, "If subsection 114(1) applies, the priority date of the claim is", one particular thing, but, "(b) the date of filing of the statement of proposed amendments that resulted in the disclosure referred to." So, if we have to add new matter, you lose priority date by section 114 down to 3.14(b).
GUMMOW J: Well, Mrs Bennett would say, "Tough".
MR CATTERNS: No, your Honour, it is a fair basis question, with respect.
GUMMOW J: And you say that covers the field, do you?
MR CATTERNS: Yes, your Honour.
GUMMOW J: Fair basis is the idea that now covers the sort of thing they are talking about - - -
MR CATTERNS: Yes, your Honour, because may I remind your Honour of the word that Justice Williams says is, "You should also amend the body of the specification so as to make it conform to the more limited invention".
GUMMOW J: Yes, that is right.
MR CATTERNS: Now, we know that has never been part of Australian law which is another thing I say about Weiss v Lufft but that is a fair basis for concept. Your Honour sees the citation of Mullard, the other of the two Mullard Cases.
GUMMOW J: Why do you say conformity has never been part of - - -
MR CATTERNS: It has never been part of Australian law but his Honour is talking in general terms about what we now would call "fair basis", namely, a lack of support in the body for what is in the claims. Your Honours, on very similar facts, the Full Court just the other day in ICI V Lubrizol, in the passages that our friends very fairly took your Honours to, distinguished Weiss v Lufft in exactly the same way.
The patent in suit in the ICI v Lubrizol Case was for a lubricant combined with refrigerants that do not wreck the ozone layer. There are two types that do not: HCFCs which have chlorine in them, and HFCs which have no chlorine at all. HFCs are better. The patentee narrowed their claims to HFCs, choosing out of a perfectly optional description exactly the same factors here, your Honours, held last week, overturning his Honour Justice Emmett on the point, that it was fairly based. So, your Honours, here it is a fair basis question once again whether we could have a claim narrower, as a matter of fair basis - - -
GUMMOW J: There is no reliance in ICI on the Full Court in the present case.
MR CATTERNS: I beg your pardon, your Honour?
GUMMOW J: There is no reliance in ICI, is there, on the case under appeal here today?
MR CATTERNS: No, your Honour, sufficiency did not come up. There were no arguments about sufficiency in that case. So your Honours, we respectfully submit that Weiss v Lufft would now be regarded, or the facts in Weiss v Lufft, would now be regarded as a fair basis question. If it would be convenient to the Court we would be happy to supply the Court and our friends with Sir Garfield Barwick's second reading speech on either of the Bills. It explains in great detail this topic of amendment and loss of priority dates.
GUMMOW J: It might be helpful, I think.
MR CATTERNS: Thank you, your Honours. We will do that in the next couple of days if that is convenient, your Honour. Your Honours, we express mild resentment at our learned friend's argument about core of the invention. Our friends say it was not challenged on appeal. Their Honours did not make a finding. Their Honours said at page 400 line 8:
It is the case of the respondent that the core of the invention is an inner barrier comprised of liquid pervious flaps.
It was not the case in written or oral submissions that the core of the invention was an inner barrier comprised of liquid pervious flaps. I recall having a long debate with his Honour Justice Wilcox whereby I said you do not have to say what your inventive step is and I said this is about a diaper. It possesses this and this.
What their Honours are referring to is evidence, your Honours, which is at page 203 volume 1 where the only relevant expert said in paragraph 9:
In light of the above and based upon my knowledge and experience, I believe that the invention claimed in the KCA Patent is directed towards the absorbent garment as claimed including the -
various combinations. Then he describes it, including the flaps. Then the four last lines:
It seems to me that the provision of the flaps -
not pervious, your Honours -
as a secondary barrier is the core of the invention.....The function of the flaps -
et cetera. Then he explains in paragraph 10 that I have taken your Honours to, the reason for having them pervious, which is to let fluid get back. Now, your Honours, my learned friend Mr Bannon at first instance cross-examined Mr Butler about that at pages 43 to 44 and got out of him, well, it is the core, is it not, that they be pervious. Fair enough, but, your Honours, that is, in the end, a matter of construction for the Court. It is not our case that the core of the invention is fluid pervious flaps and, your Honours, it is our case that there is no such statutory concept as the core of the invention and it is dangerous to create those non-statutory concepts.
McHUGH J: What is the invention? What do you say the invention is?
MR CATTERNS: A disposable diaper possessing flaps, elasticised flaps, to use the way that his Honour Justice McTiernan did it in AMP v Utilux, described in detail in the specification and more closely defined as possessing fluid pervious flaps in claim 1 and yet, more narrowly, in subsequent claims. That is the physical thing that is the combination, the product, the manner of manufacture. Your Honours, just a minor point, his Honour - - -
GUMMOW J: Just go back to 114. I am not sure you are not pulling the wool over my eyes.
MR CATTERNS: I am sorry, your Honour?
GUMMOW J: Section 114 postulates an amendment which discloses as a result of amending, in other words, you put more in.
MR CATTERNS: Yes, your Honour.
GUMMOW J: If you had amended here you would have taken it out.
MR CATTERNS: I thought we were postulating something like his Honour the Chief Justice postulated, which is a little sentence that explains it better which says that notwithstanding the fact that I hereby have described this as optional I now choose to - - -
GUMMOW J: Why would you have lost your priority date if you had amended the body to bring it clearly in conformity with the amended claims?
MR CATTERNS: It would be a question - - -
McHUGH J: What if you struck out the words "vapour and/or"?
MR CATTERNS: Well, your Honour, the question would be whether that is claiming matter that is in substance disclosed as a result of amending the specification. I mean, I do not concede that it would, necessarily, but that would be the question, and that is why people try not to amend the body of their specifications, they having been lodged. That is why the practice is contrary to Weiss v Lufft.
GUMMOW J: Yes, the practice is caution, I suppose. That is all, it seems to me.
MR CATTERNS: Yes, I am sorry, I do not mean to submit that we would without question lose our priority date. It depends how it is done, but that is the reason for the practice of not playing with the body of your specification. Your Honours, his Honour the Chief Justice, arguendo, rewrote the specification with a reference to Proctor and Gamble. May I just remind your Honours that the fact is that Proctor and Gamble was not, of course, prior art. Proctor and Gamble's impervious flaps was not until 1989. That comes from paragraph 14 of the judgment and page 87 of the appeal book.
May I remind your Honours that all of these things are after 1985, the date of lodgment in Australia, which, as his Honour Justice Gummow held in Rescare, is the date for sufficiency. As I submitted in-chief, we do not agree with our friend that the whole direction of the specification is fluid impermeable. That is the "contains/barrier" argument. May I just refer to some findings on that: his Honour Justice Burchett at 371 to 372; his Honour Justice Tamberlin at 412. The evidence is the evidence of Mr Butler who explained that advantage at paragraph 10 at 204.
His Honour Justice Burchett's finding about this balance in the passage at page 111, for example, that his Honour the Chief Justice took my friend to, was not not accepted by the Full Court. Indeed, their Honours noted in page 401 in a passage that has a typographical in it that I think we all agree. That is page 401, line 47:
Mr Butler did give evidence that although it was a disadvantage.....if fluid did get passed the flap, an advantage of the liquid -
it should be "pervious flap" -
was that it could pass back -
There was no evidence to the contrary and Justice Burchett accepted that, as I have drawn attention to that at 371 to 372.
As I submitted in-chief, we do not agree that our product is impermeable. Those words do appear in the document at pages 244 to 245, but Mr Butler's evidence at 74 to 89 makes it clear that it is not, but we submit that it is irrelevant. Your Honours, in the end what Weiss v Lufft says you can and should do answers what may be a floodgates argument about the practice in the Patent Office and so on. Our principal case, as your Honours know, is based on matters of statutory construction whereby we say that the requirement of description and the requirement - - -
GUMMOW J: You say you can overcome the effects of Weiss v Lufft because you can read the whole document as an entirety.
MR CATTERNS: Yes, your Honour.
GUMMOW J: Well, that is the question we have to decide really.
MR CATTERNS: Yes, your Honour, and on the one hand - - -
GUMMOW J: Mrs Bennett says, well, that produces an odd result; that you have got the body saying the one thing and suggesting the opposite of what is, in fact, now the case as a result of the amendment.
MR CATTERNS: Well, your Honour, if there were - - -
GUMMOW J: And then she prays in aid the misleading idea in Sami Svendsen.
MR CATTERNS: Yes, your Honour, but, with great respect, it is not misleading. It is a matter in the end of impression, not authority, although there are plenty of cases, including ICI, which say optional can be fair basis and if it was misleading it would not provide fair basis. So those cases apply by parity of reasoning.
GUMMOW J: Well, that is another worrying aspect of this appeal.
MR CATTERNS: Yes, but, your Honour, really the factual question gets down to describing something as optional and then claiming it in the narrower way, we submit, does not give rise to the contention that our friend puts forward and the facts in Weiss v Lufft were different. It is a factual question and reminding your Honours that in Welch Perrin the Court did say you read the document as a whole.
GLEESON CJ: Mr Catterns, on page 190, the critical sentence appears as the first sentence of a paragraph.
MR CATTERNS: Yes, your Honour.
GLEESON CJ: I take it that there are some words omitted from the second sentence.
MR CATTERNS: Yes, I think it must be "is" or "would be".
GLEESON CJ: Was there any consideration of that, either at first instance or before the Full Court?
MR CATTERNS: I do not believe so, your Honour. It was not put forward as an attack on ambiguity, I do not think. I imagine it has at least "is made of a fine mesh".
GLEESON CJ: Thank you.
MR CATTERNS: I do not believe it was discussed at either level, your Honour. May it please the Court.
GLEESON CJ: Thank you. We will reserve our decision in this matter.
AT 4.20 PM THE MATTER WAS ADJOURNED
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